A lesson in goodwill

21st Jan 2019

Listen, learn, read on… recommends Désirée Fields. T-344/16, Blackmore v EUIPO and T-328/16, Paice v EUIPO, General Court, 4th October 2018.

A lesson in goodwill

T-344/16, Blackmore v EUIPO and T-328/16, Paice v EUIPO, General Court, 4th October 2018

Key points

  • Contractual provisions regarding the future ownership of goodwill are necessary to avoid conflicts 
  • The existence of a common field of activity is not determinative, but has varying relevance depending on the facts of each case

In April 2013, ex-Deep Purple band member Ritchie Blackmore applied to register DEEP PURPLE as an EU trade mark for various goods and services in classes 9, 25 and 41. Current band member Ian Paice opposed the application, relying on Article 8(4) of Regulation (EC) No 207/2009, based on the earlier non-registered mark DEEP PURPLE and the UK law of passing off.

EUIPO’s Opposition Division upheld the opposition in part, but granted the application for the goods in class 25 and for some of the goods in class 9. Both parties appealed. EUIPO’S Fifth Board of Appeal (BoA) dismissed Paice’s appeal in relation to computers and digital games, but allowed it for the goods in class 25 and for mouse mats, mobile phone accessories and sunglasses in class 9. Both parties appealed to the General Court (GC). 

Grounds for appeal

Blackmore argued that the BoA was wrong to find that Paice had the requisite goodwill and to refuse registration for a wider range of goods and services than was justified by the evidence, which related solely to live musical performances. Paice argued that the BoA failed to consider Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155, according to which the absence of a common field of activity is not determinative for establishing a likelihood of misrepresentation. Paice also argued that Blackmore intended to deceive the public. 

Appeals dismissed

The GC rejected Blackmore’s appeal. Paice had provided independent proof that Deep Purple had an active and continuous presence in the UK and enjoyed considerable popularity. The GC found that “merchandising” was an essential part of a touring band’s business and that the evidence showed that it generated significant revenue for Paice. There was no support for Blackmore’s claims that the goods concerned were dissimilar or that the BoA had wrongly decided that the goodwill in the mark Deep Purple extended to merchandising of a rock band.

The GC also rejected Paice’s appeal, in particular deciding that, while the existence of a common field of activity was not determinative, this did not mean that it was irrelevant. Computers and digital games were considered a remote field of activity compared with that of a rock band.

Extent of goodwill 

This case illustrates the need for contractual provisions from the outset regarding the future ownership of goodwill attached to the name of a band or any organisation that could be seen as having equal rights holders. Problems can arise when members leave or when there is a complete breakup. In the latter case, the goodwill may belong to the “last one standing”. The question also arises as to what extent goodwill in a band’s name extends to other goods and services, with the category of goods that may be considered part of the business of a rock band on tour becoming increasingly extensive.

Désirée Fields is a Legal Director at DLA Piper UK LLP

Her practice focuses on trade marks and brand protection.