Band-name dispute – passing-off defence allowed after being partially struck out for estoppel

Posted: July 12, 2021

The Court of Appeal has allowed an appeal against a decision of the Intellectual Property Enterprise Court, which had partially struck out a defence to a claim in passing-off on the basis of issue estoppel in a dispute over ownership of a band name.[1] 

The IPEC had found that the defendants were estopped from claiming ownership of the goodwill in the group name and from raising certain alternative defences due to an earlier decision in trade-mark invalidity proceedings, and partially struck out the defence.  But the Court of Appeal doubted whether the decision in the earlier proceedings actually created issue estoppel due to its twin ratio, and also held that, even if it did create an issue estoppel, there were special circumstances that justified allowing the defendants to challenge the claimant’s standing to bring a passing-off claim in his own name.

Comment

Lord Justice Lewison’s consideration of the extent to which issue estoppel can arise in a twin ratio decision provides useful guidance for practitioners.  The judgment leaves open the question of whether it is possible for each ratio in a twin ratio case to give rise to an issue estoppel.  But even if a twin ratio decision could create an estoppel for both determinations, Lewison LJ found that an inability to appeal may be one of the special circumstances that persuade a court to permit a challenge to at least one of the determinations.  Lewison LJ’s discussion of whether the Trade Marks (Relative Grounds) Order 2007 permits one only of several partners of a partnership that owns the goodwill in an unregistered mark, acting alone, to oppose registration of the mark by another partner will also be of interest to trade-mark practitioners.

This case also serves as a reminder for entertainment lawyers of the problems that can arise where the ownership of a group name has not been agreed as between group members.  The subsequent decision of the Court of Appeal, finding differently to the IPEC, further highlights the uncertainty that is created as between group members if they do not deal with this issue, either under a band partnership agreement or following a split, and the consequent risk of costly legal proceedings. 

Ben Gisbey, Partner, Simkins LLP and Dionne Clark, Trainee Solicitor, Simkins LLP

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

To read our previous article on the IPEC decision, click here


[1] Thomas v Luv One Luv All Promotions Ltd & Anor [2021] EWCA Civ 732 (20 May 2021).