No Luv lost in band-name dispute – passing-off defence partially struck out for estoppel

Posted: July 21, 2020

The IPEC has partially struck out a defence to a passing-off claim over the name of a musical group, known as “Love Injection” or “Luv Injection”, on the basis of issue estoppel.[1]   Where an issue had already been determined in trade-mark invalidation proceedings, the parties were estopped from denying the findings of those proceedings in subsequent passing-off proceedings, as to do so would be an abuse of process.

Comment

The case provides a useful overview of issues to consider in a case of cause-of-action estoppel, issue estoppel and abuse of process.  Parties should bear in mind the underlying public interest that “a party should not be twice vexed in the same matter”.  So, where claims have already been decided in earlier proceedings, they will be open to challenge on the basis of estoppel and abuse of process.

The case also serves as a reminder for entertainment lawyers of the serious problems that can arise where ownership of a group name has not been agreed between its members – whether in a formal band partnership agreement or as between remaining and leaving members following a split.  Some key questions should be considered and, where feasible, addressed:

  • Are there dominant or lead member(s) of the group who should have continuing rights to use or ownership of the name, regardless of whether they or others leave? 
  • Should the leaving member(s) be entitled to an ongoing royalty for use of the name (and how and on what activities should that be calculated)? 
  • Have any leaving member(s) abandoned their claim for a share of the goodwill in the name, as was argued in this case? 
  • Should separate groups be allowed to co-exist under similar names incorporating or referring to the original group name? 

Of course, these issues may be contentious, and band members may well be reluctant to argue about them when the group is still together and things are going well.  Yet this case provides a cautionary tale of what can go badly wrong when these sorts of issues are ignored.

Ben Gisbey, Partner, Simkins LLP

To read the full article, click here.  Written for Entertainment Law Review.


[1] Thomas v Luv One Luv All Promotions Ltd & Anor [2020] EWHC 1565 (IPEC).