Case No. EWHC-1798-(IPEC)

206.The Claimants’ case on the UK TM is under both section 5(4)(a) of the 1994 Act (that the Claimants were at the time of application entitled to prevent the use of the mark) and section 3(6)(a) (that the mark was applied for in bad faith).207.Counsel for both parties accepted that if the Claimants succeeded on the passing off claim then invalidity should follow under section 5(4)(a).208.The correct approach to section 3(6) is as set out in the propositions taken from Red Bull cited above at paragraph 78.SubmissionsClaimants209.The Claimants say that the test is met because: Mr Clarke was aware of the prior use of the Claimants’ signs; was interested in performing as ‘the Rubettes’ without Mr Williams’ involvement; intended to use the UK TM to pass himself off as the Claimants and to prevent the Claimants from exercising their rights (as manifested through the subsequent conduct of the Defendants); and that this is sufficient to satisfy the requirements of bad faith for the purpose of section 3(6), being, in essence, that the conduct should fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced business persons in the music industry.210.Mr Smith submitted that the following facts supported the Claimants’ case:•Mr Clarke applied for the UK TM on 24 October 2018, just as Mr Williams moved to Australia. Mr Clarke had been putting together his own band before that date without discussing this with Mr Williams. He did not discuss his intention to register the trade mark with Mr Williams.•Contrary to Mr Clarke’s suggestion about his motivation during cross-examination, it was not necessary to have a trade mark for ‘the Rubettes’ to work and his motivation was not to protect against unlawful use. Mr Smith noted that there was no evidence of any threat of unlawful use at any time; and that the only use to which the UK TM has been put was to threaten venues which had a relationship with the Claimants’ band.211.Mr Smith relied on correspondence with the Plowright Theatre which made strong allegations of trade mark infringement. In addition, Mr Smith submitted that during his evidence Mr Clarke had given a clearly false account about that correspondence, asserting that he was complaining about use of his image when the letter was demonstrably about trade mark infringement only. In the circumstances, it was said that such evidence was discreditable and consistent only with bad faith.Defendants212.The principal ground on which Mr Colbey resisted a finding under section 3(6)(a) was that the Claimants are currently contractually prevented from using ‘the Rubettes’. His submissions on this point were extremely brief, but appeared to be directed towards Mr Clarke’s understanding of the Claimants’ rights and interests in ‘the Rubettes’.213.Mr Colbey also relied on the 1 July email which, in his submission, gave Mr Clarke no reason to believe that Mr Williams would still perform as ‘the Rubettes’. His overall submission was that, seen in that context, Mr Clarke’s conduct did not meet the standard set out by Arnold J in Red Bull as it was not proven to the requisite standard that Mr Clarke knew that his behaviour was unacceptable by the standards of reasonable persons carrying on business.