Raising the bar for acquired distinctiveness in Community Trade Marks and the difficulty with performance ‘format’ copyright claims
The Intellectual Property Enterprise Court in the case of The Ukulele Orchestra of Great Britain v. Erwin Clausen  EWHC 1772 (IPEC) (2 July 2015) has dismissed two out of the three claims brought by The Ukulele Orchestra of Great Britain’s (UOGB) against a rival ukulele orchestra named The United Kingdom Ukulele Orchestra (UKUO):
- The court rejected UOGB’s claim for trade mark infringement ruling that UOGB’s Community Trade Mark was invalid due to its failure to gain acquired distinctiveness in all Member States where the average consumer would recognise the descriptive character of its name.
- The court further rejected UOGB’s claim for copyright infringement ruling that the ‘format’ of its performances lacked both certainty and unity and could not therefore be protected as a dramatic work.
- The court however held that UOGB’s passing off claim succeeded on the basis that there had been a misrepresentation to the public that caused damage to UOGB’s goodwill.
The court’s ruling has set a high bar for acquired distinctiveness in Community Trade Mark cases highlighting that descriptive marks, particularly those in the widely recognised English language, may be vulnerable to claims of invalidity. The ruling has also highlighted the difficulty in relying on a format as a dramatic work where the elements making up the format are not certain or unified.
The claimant, UOGB, had gained success in the UK and Germany as a group of musicians who played ukuleles and performed popular rock anthems and theme tunes. The defendant, Erwin Clausen, is the owner of UKUO, a German based orchestra of a similar style to UOBG, made up of UK ukulele players. UOBG brought a claim against UKUO for infringement of its word mark ‘The Ukulele Orchestra of Great Britain’ which it had previously registered as a Community Trade Mark. The defendant counterclaimed for invalidity stating that UOGB’s mark was devoid of distinctive character.
Community Trade Mark
The court stated that UOGB’s word mark was descriptive. The name simply described UOGB as an orchestra made up of ukulele players from Great Britain. In order to succeed in its claim for trade mark infringement UOGB therefore had to show that the mark had acquired distinctiveness through use in all Member States where the average consumer would recognise the descriptive character of the word mark. This meant that UOGB had to show acquired distinctiveness in all Member States:
- where English was spoken as the mother tongue or official language (UK, Republic of Ireland, Malta);
- where English was sufficiently well spoken (the Netherlands, Sweden, Denmark, Finland, Cyprus); and
- where the English words were similar to their equivalents in the native language of that Member State (Austria, Luxemburg, Germany – as ukulele orchestra is Ukulelenorchester).
As UOGB’s mark had only acquired distinctiveness in the UK and Germany, the court ruled that its Community Trade Mark registration was invalid.
UOGB claimed that copyright subsisted in the format of its performances as a dramatic work. It stated that a number of elements, such as dressing up in evening attire, telling jokes between songs and playing music that is not usually played on the ukulele, created a format that could be protected as a dramatic work. UKUO had copied this format therefore infringing UOGB’s copyright.
The court disagreed, ruling that the format described was not fixed by a recorded performance. Judge Hacon explained that the format had no certainty noting that there was “uncertainty about the number of musicians, the precise nature of their formal attire, the particular music played (any will do and in any order), which songs are to be sung and in what order and what is to be spoken by way of jokes or otherwise.” Furthermore, Judge Hacon stated that “the vast array of alternative performances which would infringe the two formats [gave] rise to the second vice: lack of unity.” Therefore no copyright subsisted in the work.
UOGB’s claim for passing off succeeded with the court ruling that all of the requirements of goodwill, misrepresentation and damage were present. The evidence that UOGB had put forward to show that the trade mark had acquired distinctiveness proved that goodwill was associated with its trade name and that the public identified UOGB as the seller of concert tickets under that name. The use of the name The United Kingdom Ukulele Orchestra misrepresented to the public that UKUO was either the same or commercially connected to UOGB. This confusion meant that UOGB’s goodwill was damaged and that they had lost control over their reputation as performers.
The decision of the court illustrates that the bar for acquired distinctiveness in Community Trade Mark cases has been set very high and will be applied strictly. As a consequence, businesses may consider seeking trade mark protection on a country by country basis across the European Union as opposed to, or in addition to, Community Trade Mark registration.
Furthermore, those seeking to rely on copyright in a dramatic work as a format will need to consider the difficulty of fixation. The elements making up the format will need to be clearly defined (so that certainty is achieved) and unified as a format (so that the elements are not easily identified in other performances).
Emily Owen-Evans, Trainee Solicitor, Michael Simkins LLP