Case No. EWHC-1798-(IPEC)

as handed down by the judge remotely by circulation to the parties’ representatives by email and release to the National Archive. The date and time for hand-down is deemed to be 10.30am on Wednesday, 13 July 2022.Claim No: IP 2019-000131INTELLECTUAL PROPERTY ENTERPRISE COURT (Ch.Div.)The Rolls Building7 Rolls BuildingsFetter LaneLondon EC4A 1NLBefore:MS. PAT TREACY(SITTING AS A JUDGE OF THE CHANCERY DIVISION)- – - – - – - – - – - – - – - – - – - – -Between:- – - – - – - – - – - – - – - – - – - – -- – - – - – - – - – - – - – - – - – - – -MICHAEL SMITH (instructed by Aston Bond Law Limited) appeared for the Claimants.RICHARD COLBEY (instructed by RafterMarch UK) appeared for the Defendants.Hearing dates: 25 and 26 May 2022APPROVED JUDGMENTDEPUTY JUDGE TREACY:OVERVIEW1.The claim relates to the name ‘the Rubettes’ which was first used by a pop band in 1974.2.The First Claimant (‘AWEL’) was incorporated in March 1976. It is owned and controlled by the Second Claimant (Mr Williams) and his wife. They are the sole shareholders. Mr Williams and the First and Second Defendants (Mr Clarke and Mr Richardson respectively) were all involved with the original band known as the Rubettes at around the time of the band’s formation or during its initial period of success. The Third Defendant (Mr Etherington) began performing with the other parties at a later date.3.In summary, the Claimants’ pleaded case is that:•AWEL (or AWEL and Mr Williams) is the owner of goodwill in the name ‘the Rubettes’ and in the name ‘the Rubettes featuring Alan Williams’ (the ‘Rubettes Names’) when used in relation to live music events, merchandising, music sales and associated goods and services such that when used in relation to those goods and services they denote goods and services authorised by one or both of the Claimants; and•none of the Defendants owns any goodwill associated with the name ‘the Rubettes’.4.The Claimants’ principal claim is that since late 2018 the Defendants’ involvement in a band using, or being promoted under, the name ‘the Rubettes’ amounts to passing off.5.In addition, the Claimants plead that Mr Clarke’s application for a trade mark for the word mark ‘the Rubettes’ in October 2018 (subsequently granted in January 2019):•was made in bad faith contrary to section 3(6) of the Trade Marks Act 1994 (‘the 1994 Act’);•was in contravention of section 5(4)(a) of the 1994 Act; and•the UK registered trade mark in classes 9, 35 and 41 for the word mark ‘The Rubettes’ (the ‘UK TM’) is consequently invalid under section 47(1) of the 1994 Act.6.The Defendants’ case is, in summary, that there was no agreement as to how the goodwill generated by the band should be owned and that the goodwill was therefore owned by the members of the band jointly and severally.PROCEDURAL HISTORY7.The claim was issued on 8 August 2019. A defence was filed on 6 December 2019. The matter was stayed for 12 weeks from 16 December 2019 and again from 11 March 2020 until 31 May 2020. The Claimants were permitted to amend their Particulars of Claim at a CMC on 19 January 2022. Directions were also given for an amended Defence and an amended Reply. Directions for disclosure and evidence were given, and the date for trial was fixed. All the preparatory steps ordered at the CMC subsequently took place and a further application by the Defendants to file and serve limited evidence in reply to the Claimants’ evidence was granted by an order dated 4 May 2022.THE CONDUCT OF THE TRIAL8.The trial took place mainly in person over two days. Mr Michael Smith was counsel for the Claimants and Mr Richard Colbey for the Defendants.9.On the first morning of trial, it became apparent that the Third Defendant, Mr Etherington, was having difficulty in returning from Spain, where he was travelling on business, to give evidence in person. Mr Colbey explained that this difficulty had only just been made known to him and to the Defendants’ solicitors. An oral application was made to permit Mr Etherington to give evidence and to be cross-examined remotely. The Claimants did not object as Mr Etherington’s evidence was not, in their view, central and to avoid any further delay in the proceedings. Permission was granted for Mr Etherington to give evidence remotely, notwithstanding the late notice. However, for the avoidance of doubt, it should be noted that it was the individual circumstances of this case that led to this decision and that applications to participate remotely should always be made in good time and for good reasons, and those which are not will face headwinds.10.Some minor difficulties in the cross-examination of Mr Etherington were caused by the nature of the remote set up, which had inevitably been arranged in haste. However, overall the trial ran smoothly and I am grateful to all of the professional representatives of the parties and to the Court staff for their work in ensuring that this was the case. The parties had not arranged an overnight transcription service so counsel helpfully produced short written notes summarising their closings and their observations on the evidence, which have been of considerable assistance in producing this judgment.THE FACTUAL BACKGROUND11.Much of the broad factual background is agreed. It was common ground that the description set out in the introductory paragraphs of the Amended Particulars of Claim is largely uncontroversial and I have relied on those paragraphs in summarising the position. Contentious issues of fact are dealt with as relevant when discussing the issues to which they relate.12.The Rubettes was formed early in 1974. The band‘s first song was ‘Sugar Baby Love’. It was successful. That song was followed by others which had varying degrees of success in the UK and (at least) across the rest of Europe until the late 1970s.13.Mr Williams, Mr Clarke and Mr Richardson were all involved with the Rubettes during that first period of success. Mr Williams is a vocalist, songwriter and musician; Mr Clarke is a bass guitarist; and Mr Richardson is a drummer.14.Mr Williams has been performed under the name ‘the Rubettes’ (or a variation of that name) since the 1970s, save for a period when the band was largely dormant in the early 1980s. Since 1 January 2003 the band of which Mr Williams formed a part was generally called ‘the Rubettes featuring Alan Williams’.15.Mr Clarke was involved with ‘the Rubettes’ and then ‘the Rubettes featuring Alan Williams’ for two periods: first between 1974 and 1988, and subsequently between 1993 and 2018.16.Mr Richardson also performed with ‘the Rubettes’ and then ‘the Rubettes featuring Alan Williams’ for two periods: first between 1974 and 1982, and subsequently between 2000 and 2018.17.Mr Etherington is a keyboard player (among other things). He was not part of the Rubettes during its early existence but has performed with ‘the Rubettes featuring Alan Williams’ since around 2016.18.Between 1974 and early 1976, the Rubettes traded through a company called The Rubettes Limited. The band had at that time six members: Messrs Williams, Clarke and Richardson; Mr Peter Arnesen; Mr Bill Hurd; and Mr Tony Thorpe. Each band member had shares in The Rubettes Limited, as did the band‘s management company. The evidence is that none of the band members took any interest in the running of The Rubettes Limited, that the company ceased trading in around 1977 and was subsequently struck off and dissolved in July 1998.19.Mr Arnesen and Mr Hurd both left the band in late 1975 or early 1976. The remaining band members continued performing as ‘the Rubettes’.20.Rubettes (1976) Limited (the ‘1976 Company’) was incorporated in April 1976. Each remaining band member was allotted one share in the 1976 Company. The 1976 Company carried on a business of providing live music events, music sales and related goods or services using the name ‘the Rubettes’. The band continued to be successful and to tour following the departure of Mr Hurd and Mr Arnesen and the formation of the 1976 Company.21.Mr Thorpe left the band in 1979. He was replaced for a short while, but by 1980 only Mr Williams, Mr Clarke and Mr Richardson remained. The band was less active between around 1981 and sometime in 1983 and did not tour during that period.22.During the mid to late 1980s, and subsequently, a demand developed for bands to perform on ‘Oldies’ or ‘Nostalgia’ tours or at festivals. From 1983, a further band of musicians performed as ‘the Rubettes’. The initial members were Mr Williams and Mr Clarke, together with Mr Alex Bines and Mr Hurd.23.Bands using the name ‘the Rubettes’ (in various iterations) have been involved in Oldies or Nostalgia tours and festivals since 1983. The membership of those bands has shifted over time. The involvement of each of the parties up until 2018 is as set out at paragraphs 13 to 17 above.24.Mr Hurd set up a separate band using the name ‘the Rubettes’ in 1999. Litigation between him and the Claimants commenced in 2000. A settlement agreement was concluded in 2002 (the ‘2002 Settlement Agreement’) under which, as from 31 December 2002, Mr Williams and AWEL would trade as ‘the Rubettes featuring Alan Williams’, while Mr Hurd would trade as ‘the Rubettes featuring Bill Hurd’.25.Mr Williams, Mr Clarke and Mr Richardson have since 2000 performed together as members of the same band (for convenience, ‘the 2000 Band’). Not all of them always appeared at performances and a number of other musicians have appeared with the 2000 Band from time to time, including, for example, a Mr Mark Haley (who played no part in this litigation) and subsequently Mr Etherington.26.It appears that since 2003 the 2000 Band has generally performed under the name ‘the Rubettes featuring Alan Williams’. It is not agreed that this name was always used and the Defendants plead that it was not.27.While no admissions were initially made to this effect, the evidence now shows that throughout the history of the various bands relevant to this trial, all revenue has been paid to a corporate entity rather than to any individual. It was the corporate entity which made the bookings and paid the expenses. Those who performed were paid a fee per performance.28. Since 1983, AWEL has dealt with the business aspects of organising the band‘s appearances, merchandising and related goods and services, including during the period when neither Mr Clarke nor Mr Richardson performed with the band.29.Since 1983, all earnings were paid to AWEL, with the band members (other than Mr Williams, who was remunerated through his share of the profits of AWEL – if any) being paid a fee per performance. AWEL paid any costs or expenses incurred. I should mention for completeness that it was suggested by Mr Clarke that from time to time a small proportion of merchandising revenue was also paid to the performers, but nothing turns on that.30.In the autumn of 2018, Mr Williams confirmed to the other band members that, having previously regularly visited his daughter who was living in Australia, he had received a resident’s permit for Australia and was moving to live there.31.A few months earlier (the precise circumstances are explored in more detail below), there had been discussions between the parties about money and a disagreement between, in particular, Mr Clarke and Mr Williams. On 1 July 2018, Mr Williams wrote in an email to Mr Clarke (‘the 1 July email’):“Due to recent activities undertaken by certain people my position has become untenable and as a result I am disbanding my present band line up as of now and as a result I must inform you that your services will no longer be required.”32.Around 24 October 2018, Mr Clarke applied for the UK TM. The application proceeded to registration on 11 January 2019.33.At some point before 3 March 2019, Mr Clarke, Mr Richardson and Mr Etherington formed a band using the ‘the Rubettes’ name and, in May 2021, Mr Hurd also agreed to perform with that band.THE ISSUES FOR TRIAL34.The issues identified at the CMC for trial were:Passing off(i)When did the Defendants commence the acts complained of (‘the relevant date’)?(ii)At the relevant date, was AWEL (or AWEL and Mr Williams together) the owner(s) of goodwill associated with the Rubettes Names or any of them?(iii)At the relevant date, were the Defendants or any of them the owners of any goodwill associated with the Defendants’ Signs or any of them?(iv)In the light of the above, does the use by the Defendants of the Defendants’ Signs or any of them amount to a misrepresentation that the Defendants’ live music events, merchandising, music sales and associated goods and services are the goods and services of the First Claimant (alternatively the Claimants together) or are otherwise associated or connected with or authorised by the First Claimant (alternatively the Claimants together)?(v)Has any misrepresentation made by the Defendants damaged or is it likely to damage any goodwill found owned by the AWEL (alternatively AWEL and Mr Williams together)?Trade mark invalidity(vi)Was the application for the UK TM made in bad faith?(vii)In light of the findings on passing off and bad faith, is the UK TM invalid?General(viii)If passing off is shown, were the acts of passing off flagrant and/or calculated to benefit the Defendants in excess of the likely damages?35.The term ‘Defendants’ Signs’ was not defined in the list of issues attached to the order made following the CMC. 36.It may be intended to refer back to the term the Amended Particulars of Claim where it is defined at paragraph 34 as “… the sign “the Rubettes” or similar names /devices featuring the word “Rubettes” (including the Logo referred to at sub-paragraph 34(i) below).”37.The Claimants’ skeleton argument is rather clearer in identifying the issue of concern to the Claimants. Paragraph 8 describes the Defendants’ Signs. It explains that Mr Clarke “started his own band, trading as “the Rubettes” and using the following logo (“the Logo” and together “the Defendants’ Signs”)”:38.Paragraph 10 of the skeleton argument explains that the Claimants’ concern is that the Defendants “have played together as “the Rubettes” and under the Defendants Signs and continue to do so”.COMMENTS ON THE EVIDENCE AND THE WITNESSES39.Counsel for both parties submitted that some of the witness evidence was unsatisfactory. I deal with the specific allegations below as far as necessary, but consider it useful first to make some general observations about my approach to the evidence. These reflect comments in an unrelated case1 and are based on well-known principles. I consider it helpful to set them out for the benefit of the parties when reading this judgment.40.My starting point is the Judgment of Leggatt J (as he then was) in Gestmin v Credit Suisse [2013] EWHC 3560 (Comm) (‘Credit Suisse’), from [19]. I do not need to set those observations out in full, but note particularly the comments at [22] that the best approach in the trial of a commercial case is to base factual findings on inferences drawn from the documentary evidence and known or probable facts. The value of oral testimony is ideally “to subject the documentary record to critical scrutiny and to gauge the personality, motivations and working practices of a witness”.41.In a case such as this, where almost all the witnesses are personally involved (this applies in particular to Mr Williams, Mr Clarke and Mr Richardson), Leggatt J’s observations in Credit Suisse on the fallibilities of human memory and the distorting effect of the litigation process are particularly important:“The process of civil litigation itself subjects the memories of witnesses to powerful biases. The nature of litigation is such that witnesses often have a stake in a particular version of events. This is obvious where the witness is a party or has a tie of loyalty (such as an employment relationship) to a party to the proceedings. Other, more subtle influences include allegiances created by the process of preparing a witness statement and of coming to court to give evidence for one side in the dispute. A desire to assist, or at least not to prejudice, the party who has called the witness or that party’s lawyers, as well as a natural desire to give a good impression in a public forum, can be significant motivating forces.Considerable interference with memory is also introduced in civil litigation by the procedure of preparing for trial. A witness is asked to make a statement, often (as in the present case) when a long time has already elapsed since the relevant events. The statement is usually drafted for the witness by a lawyer who is inevitably conscious of the significance for the issues in the case of what the witness does nor does not say. The statement is made after the witness’s memory has been “refreshed” by reading documents. The documents considered often include statements of case and other argumentative material as well as documents which the witness did not see at the time or which came into existence after the events which he or she is being asked to recall. The statement may go through several iterations before it is finalised. Then, usually months later, the witness will be asked to re-read his or her statement and review documents again before giving evidence in court. The effect of this process is to establish in the mind of the witness the matters recorded in his or her own statement and other written material, whether they be true or false, and to cause the witness’s memory of events to be based increasingly on this material and later interpretations of it rather than on the original experience of the events.” [19] and [20]42.Notwithstanding the adoption of Practice Direction 57 AC, which deals with the preparation of witness statements for use at trial, the potential problems with witness evidence arising from the process of civil litigation itself, as identified in Credit Suisse, have not been eliminated.43.The difficulties of assessing the witness evidence are compounded by the uneven documentary record. Some of the documents which do exist are said by some of the parties to be misleading in themselves or to have been entered into as a result of a misrepresentation. The Defendants’ case, in particular, relies principally on oral evidence with a lack of contemporaneous supporting documentation. As a result, while some factual findings can be made by reference to the contemporaneous documents, it has been necessary to assess the reliability of the witness evidence also by reference to other considerations.44.The relatively recent Judgment of HHJ Richard Williams, sitting in the Business and Property Courts in Birmingham, in Singh v Jhutti [2021] EWHC 2272 (Ch) contains a summary of relevant considerations when assessing evidence of events which took place over an extended period of time, in respect of at least some of which there is limited or disputed documentary evidence, and where the oral evidence is largely given by witnesses closely related to the dispute. Many of the difficulties in Singh v Jhutti also arose in this case. For example, as mentioned above, the oral evidence was, save for that of Mr Kannar, given by witnesses closely connected to the dispute and therefore likely to be subject to, in the words of HHJ Williams “… significant motivating forces and powerful biases…” [59b].45.Facing a similar situation, HHJ Williams referred to the Judgment of Lewison J (as he then was) in Painter v Hutchison [2007] EWHC 758 (Ch) at [3] setting out a non-exhaustive list of indicators of unsatisfactory witness evidence that can assist in assessing oral testimony. These were summarised by HHJ Williams as:(i)evasive and argumentative answers;(ii)tangential speeches avoiding the questions;(iii)blaming legal advisers for documentation (statements of case and witness statements);(iv)disclosure and evidence shortcomings;(v)self-contradiction;(vi)internal inconsistency;(vii)shifting case;(viii)new evidence; and(ix)selective disclosure.46.I have borne all of those indicators in mind when listening to the oral testimony and subsequently reviewing my note of cross-examination. I have also reminded myself that, as highlighted in Credit Suisse, a witness may have a conviction as to the truth of a particular fact, which is found to be incorrect or probably incorrect when other evidence is examined. A witness whose evidence is found to have been unreliable or not convincing on one issue is not necessarily to be regarded as unreliable on other issues. There may, however, be some issues where the only conclusion that can be drawn is that the witness is consistently unreliable or even deliberately untruthful. Such instances will inevitably taint the Court’s perception as to the overall reliability of that witness.47.In the light of those comments, I turn first to the Claimants’ witnesses. Mr Williams gave evidence on behalf of the Claimants on all issues. Mr Williams answered the questions put to him accurately, occasionally almost to the point of pedantry. His oral evidence was largely consistent with his written evidence. The fact that (in common with all the witnesses) many of the events about which he was asked took place 20 years ago or more meant that his evidence was occasionally tentative as, for example, when asked about the advice given to the band members to involve their wives in the 1976 Company. There were also inconsistencies in his evidence as to the time at which various discussions took place during the spring and summer of 2018, suggesting that some of the effects of preparing for trial identified in Credit Suisse were at work.48.Some aspects of Mr Williams’ written evidence had an element of hyperbole and the evidence overall suggests that his account of his role in some of the early activities of the Rubettes was somewhat exaggerated. On some issues (for example as to the quantum of the sum owing to the accountants in 1994, and as to the payment of that sum) he was unable to provide documentary support, while having detailed written records of other matters, and I have borne that in mind when considering his evidence on the alleged agreements entered into in 1994, not least because of the time that has passed since those agreements were allegedly concluded. Having said that, many of the most important aspects of Mr Williams’ evidence were not challenged. Overall I found him to be a credible witness but have sought to test and check his evidence (where the evidence is relevant) against other material where that is possible.49.The Claimants also relied on the evidence of Mr Nicholas Kanaar. Mr Kanaar is a solicitor who acted in relation to a recording contract with Polydor Records in the 1970s. His written evidence explained how he received his instructions in respect of that agreement and provided some tangential information about agreements concluded in 1994 dealing with the assets of the 1976 Company. Mr Kanaar was briefly cross-examined on his recollection of events at a meeting held at his firm’s office between Mr Williams and Mr Clarke around that time. Mr Kanaar’s evidence was limited in scope, and largely unchallenged. He answered the questions put to him during cross-examination succinctly, in line with his written evidence. Where he could not remember something, he said so clearly. He was a credible witness and clearly wished to assist the Court.50.Mr Clarke was the first of the Defendants to give evidence. On the whole, he answered the questions put to him clearly, from his own perspective. He had occasional difficulty in following questions from Mr Smith, where those questions were lengthy or couched in the negative. In addition, he appeared to have some difficulty in hearing Mr Smith. He described himself as a man who was interested in common sense and not in lawyers’ jargon and this was very apparent in his recollection of some issues.51.Mr Clarke was affected by the same difficulties of recollection as all the witnesses in respect of events which happened a long time ago. I consider that some of Mr Clarke’s recollections of events may have been affected by the process of litigation. The agreements allegedly concluded in 1994 are one instance of that concern and, in assessing the evidence on that particular issue, it was particularly important to have regard to the conduct of the parties and any other available evidence in assessing the probabilities of what happened.52.While not generally argumentative or evasive, Mr Clarke’s views on some aspects of the case led to his evidence being given from his particular perspective, at a tangent to the question posed by counsel and with a degree of truculence or misplaced levity. This affects the weight to be given to some of his oral evidence.53.One example will suffice. It relates to Mr Clarke’s response to questions about Mr Williams’ pre-2018 journeys to and from Australia to perform. This was relevant to Mr Clarke’s explanation of his understanding of Mr Williams’ intentions toward the band once he announced his move to live permanently in Australia. Mr Clarke gave evidence that he thought that that Mr Williams was abandoning the Rubettes and that this move would mean that the Rubettes could continue without Mr Williams. My note of the evidence is that Mr Clarke said that he had concluded that the band could continue to be booked without Mr Williams and to perform as ‘the Rubettes’ as Mr Williams could not be involved once he was living in Australia. Counsel asked Mr Clarke to comment on the fact that Mr Williams had come back and forth from Australia ever since 2014. Mr Clarke’s comment was only that perhaps Mr Williams may have too much money.54.On one or two occasions, Mr Clarke’s evidence was not credible as, for example, when responding to questions about the establishment of various social media accounts which used the name ‘the Rubettes’ without qualification and referred to the trade mark he had registered for ‘the Rubettes’. Mr Clarke initially attempted to deflect questions about responsibility for those sites or for their use of the trade marks remarking “I’m not up to speed with protocol”. When counsel noted that the same person had been involved in setting up both accounts for which Mr Clarke accepted responsibility and those for which he did not, Mr Clarke did not address the issue other than by enquiring whether it was “against the law” for the same person to be involved in setting up social media accounts on two or three separate platforms. Such argumentativeness can be an indicator of unreliable evidence. Mr Clarke ultimately accepted that at least some of those accounts had been set up for him, but his evidence as to his knowledge and involvement was not clear and I place limited reliance on it.55.Mr Clarke’s evidence about his understanding of Mr Williams’ intentions in 2018 was in my view affected by his personal stake in the events in question and by hindsight. His oral evidence that he thought that the band would be coming to an end and that Mr Williams had gone to Australia to retire does not sit well with the undisputed evidence that Mr Williams had in the past returned from Australia to perform in gigs. Mr Clarke’s evidence about his understanding of the wording in the 1 July email was not an obvious reading based on the text which mentioned only that the current line-up was being disbanded and that Mr Clarke’s services would no longer be required. The reading put forward by Mr Clarke is at odds with the overall context and is not corroborated by the evidence given by others, as considered in more detail below.56.Mr Clarke gave new evidence under cross-examination and on occasion sought to deflect criticism for matters such as inadequate disclosure towards his advisers. For example, when asked about correspondence with venues and promoters relating to potential trade mark proceedings, he said that he could not remember whether any such material had been disclosed.57.During cross-examination, Mr Clarke gave evidence that his real concern with Mr Williams’ activities was with the use of a picture containing an image involving Mr Clarke and that the reference to the UK TM may have been “an error”. The correspondence is signed by Mr Clarke personally and refers to trade mark infringement only. Mr Clarke and the other Defendants may have had a concern about possible use of their images by the Claimants, but his attempt during oral evidence to conflate that issue with his authorisation of correspondence relating only to trademarks leads me to regard his evidence on trademark issues as lacking credibility. 58.As has frequently been observed in the authorities, giving new evidence under cross-examination and failures in disclosure can be an indication of unsatisfactory witness evidence and means that a degree of caution is sensible when approaching the affected evidence. For the reasons given above, Mr Clarke’s evidence was in several respects unsatisfactory. Where this is relevant to my decision, it is referred to specifically below.59.Mr Richardson also gave evidence in person. As with Mr Clarke, it was apparent that he found the process of cross-examination intrusive. In my view, he sought to answer the questions put to him honestly. His recollection of many of the events in issue was, however, limited or non-existent and the evidence must be approached with that in mind.60.During a good deal of the relevant period, Mr Richardson was not taking any interest in the affairs of the band. I therefore treat with some caution the rather detailed evidence he gave under cross-examination that Mr Williams’ suggestion that he should sign the 1994 Agreement was a “plot to take over the world” about which he had complained at the time. This is also at odds with his written evidence that “I believed at the time that I was simply removing myself from a company that was no longer appropriate to being [sic] connected to”. In my view, this may be an instance of hindsight and of the process of civil litigation and colouring oral testimony and leading to new evidence during cross-examination. This does not mean that Mr Richardson was overall an unsatisfactory witness, but some of his evidence must be approached with caution.61.Mr Richardson’s evidence was unsatisfactory in one particular respect. This related to his withdrawal from his relationship with Mr Williams and his decision to support Mr Clarke’s alternative line up. Mr Smith submitted that Mr Richardson had clearly come to Court intending to attack Mr Williams’ integrity. I do not agree. While some of Mr Richardson’s oral evidence had not been included in his written evidence, I do not conclude that Mr Richardson had an agenda to smear Mr Williams. I did, however, reach the view that Mr Richardson’s evidence on this point was affected by his personal feelings about Mr Williams and that I should approach Mr Richardson’s evidence on this issue with some care if not already contained in a written statement, or supported by contemporaneous documents. I do not consider this to undermine Mr Richardson’s overall credibility, and much of what was said during that passage of his cross-examination was not directly relevant to the main issues.62.Finally, Mr Etherington briefly gave evidence by video link. As he had not been involved with the Rubettes before 2016 other than spasmodically, his evidence was relevant to only a few of the issues in the case. On most issues, he answered the questions put to him briefly, although on occasions he was argumentative and clearly found the process rather tedious.63.During cross-examination, Mr Etherington mentioned allegations about Mr Williams’ historic behaviour which had played no previous part in his evidence. Mr Smith submitted that this showed an intent to smear Mr Williams with unjustifiable allegations which tainted Mr Etherington’s evidence as a whole. I do not agree, but have disregarded the allegations made which were not in Mr Etherington’s written evidence or in the documents. If these were to be relied on, they should have been included in the evidence in chief when they could be put to Mr Williams.THE RELEVANT LEGAL PRINCIPLES64.This dispute relates to both passing off and trade mark issues. The key legal principles and the principal submissions of counsel on those principles are summarised below. I should record that I found Mr Smith’s structured approach to the legal issues and the relevant tests particularly helpful.Passing off65.There was little disagreement between counsel as to the principles. Mr Colbey submitted that they are not complex and referred me principally to the discussion of passing off in Clerk & Lindsell. Mr Smith helpfully drew out the key elements of passing off as set out in the leading case of Reckitt & Colman v Borden [1990] 1 WLR 491 at [499E-H], namely that a claimant in a passing off case must show that:(i)the claimant owns goodwill in a business, the goodwill being attached to some get up or feature;(ii)there has been a relevant misrepresentation on the part of the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by them are the goods or services of the claimant; and(iii)that there has been consequent damage to the claimant’s goodwill.Goodwill66.Mr Colbey submitted that it is possible for goodwill to be jointly owned, relying on Sir Robert McAlpine Ltd v Alfred McAlpine Ltd [2004] EWHC 630 (Ch) (‘McAlpine’). Mr Smith noted that the position as to joint ownership in that case had been common ground, but did not dispute the principle that joint or concurrent ownership was possible.67.As to the nature of goodwill, Mr Smith relied on the well-known passage from Lord Macnaghten’s judgment in IRC v Mullers & Co Margarine [1901] A.C. 217 at [223]-[224]:“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates.”and on the following passage from the same judgment at [223]-[224]:“For my part, I think that if there is one attribute common to all cases of goodwill it is the attribute of locality. For goodwill has no independent existence. It cannot subsist by itself. It must be attached to a business. Destroy the business, and the goodwill perishes with it, though elements remain which may perhaps be gathered up and be revived again. No doubt, where the reputation of a business is very widely spread or where it is the article produced rather than the producer of the article that has won popular favour, it may be difficult to localise goodwill.”68.I did not understand Mr Colbey to disagree with the overall proposition that goodwill is attached to a business and not to reputation alone. Indeed, the summary from Clerk & Lindsell to which I was directed states: “The claimant must establish a goodwill attached to the goods or services which he supplies” (at paragraph 25-01) and subsequently “… the claimant in an action for passing off must establish that he is in some sense carrying on a business, with which the trade or public will be led to associate the defendant’s activities” (at paragraph 25-09).The ownership of goodwill69.Mr Smith’s principal submission was that goodwill is generated by trade and the undertaking responsible for carrying on the trade owns the goodwill; in other words the carrying on of a business demonstrates where the goodwill is located.70.Mr Smith drew my attention to the discussion of the principles that apply to the ownership of the goodwill generated by a band in Byford v Oliver [2003] EWHC 295 (Ch); [2003] F.S.R. 39. At [19], Laddie J held that, in a band which operates as a partnership at will, the goodwill and other assets are owned by the partnership rather than by the individual musicians and that a member who leaves may have a claim to the realised value of the partnership assets but has no claim to the assets themselves including the name of the band or the goodwill built up under it.71.Laddie J discussed the implications of this for future iterations of a band at [25] and [26] of his Judgment:“Absent special facts, such as existed in Burchell, the rights and obligations which arise when a band of musicians, performing in a band as a partnership, split up can be explained as follows. It is convenient to start by considering the position when two, entirely unrelated bands perform under the same name. The first performs from, say, 1990 to 1995 and the second performs from 2000 onwards. Each will generate its own goodwill in the name under which it performs. If, at the time that the second band starts to perform, the reputation and goodwill of the first band still exists and has not evaporated with the passage of time (see Ad-Lib Club Ltd v Granville [1972] R.P.C. 673) or been abandoned (see Star Industrial Co Ltd v Yap Kwee Kor [1976] F.S.R. 256) it is likely to be able to sue in passing off to prevent the second band from performing under the same name (see Sutherland v V2 Music [2002] EWHC 14 (Ch); [2002] E.M.L.R. 28). On the other hand, if the goodwill has disappeared or been abandoned or if the first band acquiesces in the second band’s activities, the latter band will be able to continue to perform without interference. Furthermore, whatever the relationship between the first and second bands, the latter will acquire separate rights in the goodwill it generates which can be used against third parties (see Dent v Turpin and Parker & Son (Reading) Ltd v Parker [1965] (R.P.C.323). If the first band is a partnership, the goodwill and rights in the name are owned by the partnership, not the individual members, and if the second band were to be sued, such proceedings would have to be brought by or on behalf of the partnership.The position is no different if the two bands contain common members. If, as here, they are partnerships at will which are dissolved when one or more partners leave, they are two separate legal entities. This is not affected by the fact that some, even a majority, of the partners in the first band become members of the second. A properly advised band could avoid the problem that this might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill. This is now commonplace in the partnership deed for solicitors’ practices.”72.Mr Colbey noted that the Judgment in Byford v Oliver implies that there may be circumstances in which goodwill can be owned concurrently by sole traders and, as discussed below, submitted that at least some of those who performed as the Rubettes from time to time (including Mr Clarke and Mr Richardson) had done so as sole traders and accrued goodwill accordingly.73.At [12] of Byford v Oliver, Laddie J notes that in that case it was accepted that a partnership at will existed. He also commented at [19] that if the members of the band in that case had been performing together as independent traders rather than as partners “the position would be very different”, as “in such a case each may well have acquired a discrete interest in the name and reputation which he could use against third parties but not against the other owners”. The example given was of a very old case Dent v Turpin (1861) 2 J&H 139 and no other relevant authorities were cited.74.The circumstances in which a band will operate other than through some species of partnership or an incorporated body was not developed by counsel. Mr Smith suggested that this will rarely be the case, relying principally on the Partnership Act 1890 section 1(1) which provides that any unincorporated band of individuals who carry on business in common with a view to profits is treated as a partnership.75.It was agreed that the relevant date to assess whether the goodwill existed is the date the defendant commenced the conduct complained of: