A political problem
When parties fall out, IP disputes can rise out of the ashes, says Sarah Talland. O/367/19, BRITISH VOICE (Invalidity), UK IPO, 1st July 2019.
O/367/19, BRITISH VOICE (Invalidity), UK IPO, 1st July 2019
This decision concerns two trade mark registrations for a fledgling political party and claims by the Applicant for invalidation that these should not have been registered by the proprietors due to claims under the tort of passing off, pursuant to s47(2)(b) of the Trade Marks Act 1994 (the Act), which refers to s(5)(4)(a) of the Act.
The background to the case is that the proprietors, Mr Vaughn and Lady Brook, and the Applicant for cancellation, Mr Whitby, were all members of a new political party named The British Voice, formed in 2014. Mr Whitby was the elected party Chairman. Evidence filed in the proceedings documented a falling out between the parties, culminating in the apparent expulsion of Mr Vaughn and Lady Brook from the organisation in 2015. Shortly after leaving the party, Mr Vaughn and Lady Brook applied to register the two marks.
Mr Whitby, remaining as the party Chairman and recognised as party leader by the Electoral Commission, later learned of the registrations and filed invalidation actions based on passing off. There was an apparent allegation of bad faith, but this was not properly pleaded in the proceedings and therefore not considered in the decision.
Most of the evidence filed relates to the formation of the party, the creation of the phoenix logo and the eventual disagreement between the parties, rather than specific evidence of goodwill. Nonetheless, the decision found that goodwill exists in the name THE BRITISH VOICE as well as the phoenix logo and PROTECTING BRITISH PEOPLE.
The real issue in this decision was whether Mr Whitby was able to rely on the goodwill to succeed in the invalidation actions. An earlier decision in this case was appealed to the Appointed Person on this point, following which the decision was cancelled and referred back to the Registry. The new decision has carefully reviewed these issues and held that Mr Whitby was able to rely on the goodwill, given his position as Chairman and official recognition of him as party leader.
The decision considers whether the proprietors, as founding party members, also had a basis to claim ownership of the party’s assets. The decision concluded that these two individuals should be treated no differently to unconnected members of the public when it comes to considering passing off.
Finally, the decision considers the issues of misrepresentation and damage, swiftly concluding that as the trade marks are identical to the name, logo and slogan of the political party, both grounds are satisfied.
The registrations have therefore been declared invalid. A request for off-scale costs of £28,000 was made by Mr Whitby as a litigant-in-person, which was then denied.
Readers may recall similar disputes concerning music groups and band names, and the issues that arise when original members leave the group and continue using identical or similar names. This decision shows the importance of having legal agreements in place concerning ownership of the name when forming any type of group or organisation.
- Goodwill was established but the issue of entitlement to rely on that goodwill was at issue
- A bad faith ground could have been a useful additional claim in this case
- Ownership of an organisation’s IP should be carefully considered at the outset
Sarah Talland is a Chartered Trade Mark Attorney and Partner at Potter Clarkson LLP
Potter Clarkson LLP