The Ukulele Orchestra of Great Britain v Clausen, High Court
Something as nice as playing music went wrong here, as two competing music groups fell out and ended up in court. The Ukulele Orchestra of Great Britain registered a European Community Trade Mark of that same name. Meanwhile, another entity performed under the name “The United Kingdom Ukulele Orchestra”. The registered trade mark owner also claimed copyright infringement for copying the types of instruments, their attire and seating positions, the sort of music played and the way in which they spoke and addressed the audience.
The High Court has ruled that the trade mark should not have been registered as it was descriptive and lacking distinctiveness. It was descriptive for English speaking average consumers in the UK and elsewhere in the EU. For the registrant to claim acquired distinctiveness, it would have needed to prove that in every EU member state where the average consumer could recognise the descriptive nature of the mark. The registrant managed to show acquired distinctiveness in the UK and Germany but not in other countries, so the mark should not continue to be registered.
The claim against the defendant for passing off succeeded, though, as its name misrepresented a connection and likely confusion amongst a substantial proportion of the UK public, who believed the two groups were connected. This damaged UOGB’s goodwill.
As to the claim for copyright in a dramatic work, this lacked certainty here – there was no certainty as to the number of musicians, their exact attire, their music played and what would be said to the audience.
Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP, comments: “This case shows that even where a descriptive trade mark has acquired distinctiveness, it is still open to revocation. What started out as a case of trying to stop a competitor ended up with the loss of a registered trade mark, despite the claim succeeding on the ground of passing off.”
