Bad romance

22nd Jul 2019

Any good feeling dies as partnership dissolves, says Eve Brown. O/226/19, MODERN ROMANCE (Invalidity), UK IPO, 1st May 2019.

O/226/19, MODERN ROMANCE (Invalidity), UK IPO, 1st May 2019

The Defendant, Geoffrey Deane, was fleetingly a member of the British pop band Modern Romance. The goodwill in the band’s name was vested in a partnership jointly held between Deane and fellow band member David Jaymes from 1980 until Deane’s departure in 1982. Drummer and Claimant to these proceedings Andy Kyriacou continued to use the band name MODERN ROMANCE long after Deane and Jaymes had left the band.

Kyriacou’s use between 1999 and 2017 meant that he had accrued goodwill in the name. He was able to invalidate a UK trade mark application filed by Deane for MODERN ROMANCE for identical services on 4th July 2017 under s5(4)(a) Trade Marks Act 1994 (TMA) by furnishing proof of misrepresentation and damage.

Applying Last Minute , the Registry held that the relevant date in invalidity proceedings for assessing goodwill under s5(4)(a) TMA was the filing date (4th July 2017). Deane’s counterargument was that he owned goodwill in the mark MODERN ROMANCE at the relevant date, owing to the goodwill accrued during Deane’s two-year presence in the band. He argued that Kyriacou was trading on the reputation of the original band, which was, by default, Deane’s own reputation. It was held that since Deane had left the band 35 years before filing the trade mark application, any goodwill in the first partnership that dissolved in 1982 had dissipated.

The decision applied the ratio in Saxon :

Where a band performs as a partnership, the goodwill associated with the name of the band is an asset of the partnership, not of the individual members [para 19]
The departure of a member will, in the absence of an agreement to the contrary, result in the dissolution of the original partnership and formation of a new one [para 26]
With such a dissolution of partnerships (whether through one person leaving or the partnership simply being broken up), in the absence of special circumstances to the contrary the goodwill generated by the partnership remains owned by the partnership [para 24].

Unfortunately for ex-band members such as Deane, the lack of use of the band name by him over time and the use of MODERN ROMANCE by another band member meant that the goodwill once associated with his partnership had dissipated and been replaced. A fan of the Claimant tweeted about their “disappointment” and confusion at seeing Deane perform at a gig under the band name MODERN ROMANCE and instead expecting to see Kyriacou.

Considering the nature of goodwill – being the “attractive force”, “good name” or “reputation” – the Registry’s decision to dismiss Deane’s counterargument that Deane had retained goodwill in the name at the date of filing was the correct one. This case is no exception to the common problems that arise in band-name dispute cases such as acquiescence and the absence of written agreements, but it serves as a reminder of the importance of them in practice.

Key points

The date of filing is the relevant date in invalidity proceedings under s5(4)(a) TMA
When assessing goodwill in band partnerships, Saxon applies
Act quickly and ensure agreements are in writing

Eve Brown is a Trainee Trade Mark Attorney at Marks & Clerk LLP

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