Case No. EWHC-1798-(IPEC)

. During cross-examination, Mr Clarke agreed that a Twitter account using the Twitter handle ‘@TheRubettes’ and an Instagram account called ‘@theRubettesofficial’ had been set up for him, remarking that “Someone set that up for me – said that we should have that”. Mr Clarke’s evidence about the domain name was less clear and he suggested that the domain names had been set up by a fan of the band rather than by him, but also said “I didn’t set it up someone did it for me”. The Amended Defence also pleads that, when asked by the Claimants’ solicitors to do so, the Defendants asked the fan in question to take the sites down and this was in fact done.185.In October 2018, Mr Clarke applied for a UK trade mark for the word mark ‘The Rubettes’. The application was in classes 9, 35 and 41. The application resulted in registration of the mark on 11 January 2019.186.There has been no disclosure by the Defendants of communications with the venues with which they sought to work or with whom bookings were made.187.The Claimants have provided evidence that promotors with whom they had been in discussion about bookings have chosen not to proceed owing to the activities of the Defendants. For example, the Claimants have put in evidence an email exchange from February this year with Live Promotions Events Limited. This exchange involves the possibility of bookings in the UK and comes to an end with the following email:“Alan the problem I can see as a UK promoter is that your former colleagues have reunited and are back on the scene … calling themselves THE RUBETTES (featuring three of the original members and are playing the Butlins, Warners budget circuit etc. Such issues just cause confusion … so I will pass … and wish you well. …”188.The Claimants have also provided evidence of questions being asked about the Claimants’ band now using ‘the Rubettes featuring Alan Williams’ while others who have been members of the band use simply ‘the Rubettes’. The email which has been disclosed states that this creates a hurdle when booking venues for concerts.Assessment189.Misrepresentation is a question of fact. The limited evidence available suggests that the use by the Defendants of ‘the Rubettes’ has caused both confusion and damage. It is not correct to say that simply because original members of a band seek to perform together they have a right to use the name of the band. As is clear from Byford v Oliver and similar cases relating to ‘successor’ bands the rights of band members will depend on the facts and on the legal qualification of those facts.190.Where goodwill in a name or names associated with a band has been accrued by a business over time, that goodwill may prevent others, even those with a previous connection to the band, from using those names as a badge of origin. In the leading Judgment in Reckitt & Colman v Borden, Lord Oliver observed: “The law of passing off can be summarised in one short general proposition—no man may pass off his goods as those of another.” (499 D-H). While the tort requires not only goodwill but also misrepresentation and damage, its basic purpose remains to protect the property in goodwill which has been established through trade.191.I have already held that AWEL has established goodwill in ‘the Rubettes’ such that the use by anyone else of that name is likely to lead third parties to believe that the use is connected with AWEL. It is clear from Reckitt & Colman v Borden that it is not necessary for the public to have any awareness of the particular identity of the owner of the goodwill as long as trade under the relevant name is identified with a particular source, in this case, ‘the Rubettes’ with AWEL.192.Mr Colbey referred me to the Judgment of Jacob LJ in Phones 4U on the question of when misrepresentation and damage are likely to occur. He argued that the actions of Mr Clarke and Mr Richardson could not be misleading, and thus a misrepresentation, because they were known as members of the Rubettes, and were performing as such and so there could be no confusion. Mr Colbey noted that the test for misrepresentation formulated by Jacob LJ is whether the conduct at issue “is really likely to be damaging to the claimant’s goodwill or divert trade from him.” [19].193.That Judgment does not assist the Defendants. As Mr Smith noted, Mr Clarke and Mr Richardson are at liberty to describe themselves as former members of the Rubettes. However, once they begin using the name ‘the Rubettes’ to trade, they are invading the Claimants’ goodwill in that name as those seeing the name would be likely to infer that there was some connection between their activities and the undertaking having goodwill in the name. In reaching this conclusion, I note the observation of Jacob LJ in Phones 4U on an important aspect of Lord Oliver’s judgment in Reckitt & Colman v Borden:“Lord Oliver does not limit damage to a particular sort of damage, particularly direct diversion of sales caused by misrepresentation. If that were so, passing off would fail in one of its key purposes – protection of the property in the goodwill. The books are full of cases where the action has succeeded where there has not been, and even could not be, direct loss by diversion of sales.” [11]194.In this instance, the involvement of the Defendants in registering domain names and other social media accounts and obtaining a trade mark using ‘the Rubettes’ support my view that they have engaged in passing off. This issue was also considered by Jacob LJ in Phones 4U where he said:“This court in