Case No. EWHC-1798-(IPEC)

Further to our conversation today, we are writing, as you so advised, with regards to the incorrect and illegal publicity your company is using.We have recently discovered that your business is using the trademark “The Rubettes” in association with the marketing or sale of your products of services, ie ticket sales, in particular for the Plowright Theatre, Scunthorpe, on Thursday October 17, 2019.This letter may well be relevant for other theatres that you represent and we ask that you apply the following to each and every case.Please be advised that “The Rubettes” is a registered trademark and we believe your use infringes on our ownership of the registered trademark.We registered the trademark “The Rubettes” with the European Union and UK Intellectual Property Office [ registration no UK00003348207 and EUO18021990].We refer to Classification no’s 9, 35 and 41.Because you are using the trademark “The Rubettes” in your advertising and marketing material, we believe your use of the mark causes confusion amongst our fans and audiences and dilutes the goodwill and distinctiveness of our trademark and may likely to cause customer confusion in the future for our fans who are coming to see The Rubettes.Your unauthorised use of our registered trademark amounts to an infringement of our trademark rights and therefore, we respectivelrequest [sic] that you immediately cease and desist in any further use of the name “The Rubettes”, or any confusingly similar trademark.We will be in contact with other respected online tickets agents and theatres, to ensure that our registered trademarks will be removed from any other artist or band using “The Rubettes” trademark.We hope that this issue may be amicably resolved so we may avoid any further legal remedies as provided by EUIPO and UK Trademark Act.Attached is the Trademark Registration Certificate.We look forward to hearing from you.”235.As pointed out by Mr Smith, that letter relies heavily on the existence of a registered trade mark. It does not refer to the images used by SMG in its marketing but focusses clearly on the use of the name ‘the Rubettes’ and requests SMG to stop using not only ‘the Rubettes’ but also any confusingly similar ‘trademark’.236.In the light of the fact that there was no objective basis for the reasons given by Mr Clarke for registering the UK TM, I find that Mr Clarke’s incorrect written evidence that there was never any intent or attempt to prevent Mr Williams from working, his evasiveness during cross-examination, his willingness to give new evidence during cross-examination, and his incomplete oral evidence makes Mr Clarke an unsatisfactory witness on this issue and casts significant doubt on Mr Clarke’s evidence as to his motivations for registering the trade mark.237.While the presumption is that those who register marks do so in good faith, Mr Clarke’s evidence as to his motivations is implausible in the light of the surrounding facts and is unsupported. The evidence of his conduct shortly after the trade mark was registered persuades me that, on the balance of probabilities, Mr Clarke’s motivation was not to acquire the trade mark so as to enable himself to work, nor was it to protect his band from unlawful use: it was to enable him to interfere with the efforts of AWEL and Mr Williams to continue their business.