TRADEMARK / 08.10.2018

EU General Court throws out Deep Purple cases

The EU General Court dismissed three appeals yesterday in a trademark dispute between a member and a former member of English rock band Deep Purple.

In April 2013, former guitarist Richard Blackmore applied to register the word sign ‘Deep Purple’ to cover classes 9 (musical recordings), 25 (clothing) and 41 (entertainment services).

Although Blackmore left the band in 1993, Ian Paice and other band members carried on and continued to play concerts and record albums under the name Deep Purple.

Considered one of the pioneers of modern hard rock, Deep Purple were formed in 1968. Two of the band’s most famous songs include “Smoke On The Water” and “Highway Star”.

Paice opposed the trademark in September 2013, claiming that it was too similar to an earlier unregistered mark for ‘Deep Purple’, which covers music recordings, posters, drum sticks and clothing, among other items.

Paice alleged that use of the Blackmore mark could be prevented by an action for passing off.

In February 2015, the European Union Intellectual Property Office’s (EUIPO) Opposition Division upheld the opposition in part, refusing registration for some of the goods in class 9 and all of the services in class 41.

Paice appealed against the decision.

In the first decision, on March 21, 2016, the EUIPO’s Fifth Board of Appeal dealt with passing off, finding that after Blackmore’s resignation from the band, Paice and other members of Deep Purple had accrued “significant goodwill” under the name and that the registration would be preventable under passing off.

Blackmore appealed against this decision, claiming that the appeal board shouldn’t have admitted evidence filed by Paice after the deadline, that Paice hadn’t proven goodwill in the name Deep Purple to the requisite legal standard, and that the board was wrong to conclude that there was sufficient evidence to show that Paice was entitled to a share in the goodwill.

However, the General Court today rejected the appeal in case T-345/16. It found that Paice had proven goodwill, and that because the essential factual and legal matters in Blackmore’s claim related to Paice’s share of the goodwill “are not indicated coherently and intelligibly in the application itself”, the court was obliged to reject it.

The appeal board had also handed down another decision in the dispute, on the same day in March 2016, dismissing Paice’s appeal in part but allowing it in respect of some goods in classes 9 and 25.

The board concluded that the clothing merchandise generated a significant revenue stream for Paice and that merchandising was an essential part of the business of a rock band on tour.

It decided that the sale of clothing could be prevented by passing off and that damage to Paice’s goodwill was plausibly foreseeable.

The board also found that many of the items in class 9 were commonly decorated with commercial or personal imagery and that there would be misrepresentation and damage to goodwill if Blackmore marketed goods including mobile phone accessories.

For items such as computer games in class 9, the board concluded that they didn’t fall within goods associated with merchandising and Deep Purple in particular. In light of those considerations, the board refused to extend its correction of the Opposition Division’s decision to these goods.

Both Paice and Blackmore appealed against this decision.

Blackmore again put forward the same three claims as mentioned above, while also alleging that the appeal board had erred by refusing registration of the mark.

Again, the General Court today rejected Blackmore’s contentions in the second case, T-344/16.

In Paice’s appeal, he argued that the appeal board had failed to consider the principle in Lego System Aktieselskab v Lego M Lemelstrich (handed down by the English High Court, 1983) according to which “the existence or absence of a common field of activity is not the acid test for establishing the likelihood of misrepresentation”.

Paice also claimed that the board had failed to take into account Blackmore’s intention to deceive the public.

Today, in the third decision, T-328/16, the General Court rejected both arguments.

On intention to deceive, the court said it is common ground that Blackmore is a former member of the band and, as such, “is associated with the band in the mind of the public, which cannot in itself amount to proof of a deceptive intent on his part”.

Paice and Blackmore were ordered to pay the costs of their appeals.

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Source: WIPR

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