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12 ESLJ [i] (2014)

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Trade Mark Strategies of Emerging
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Julia Joy Gilchrist
LLM Candidate,
University of Westminster
Introduction
The intangible rights contained within an artist name are incredibly valuable. The word or phrase traded under 1
by an artist is not only the point of reference for anyone wishing to buy music or locate the artist online, but it
becomes the symbol of the brand and its quality. There is no definitive approach to acquiring rights in and
protecting a band name. Consequently a number of different methods are employed, ranging from adopting
domain names and social media pages to registering trade marks in multiple classes and territories. Some
interesting trends can be identified with regard to if and how emerging artists decide to protect their name and
this article analyses these different approaches, whilst highlighting some potential consequences of not
adequately protecting a name. Parallels will be drawn to other elements of the artists' business activity, such as
merchandising, with the view to identifying the primary influencing factors of an artist's trade mark strategy.
Observations are based on the statistics in Appendix A, a sample of 254 artists from various chart compilations,
award nominations and record label rosters, chosen to represent a range of different types of emerging artists
that have had at least relative commercial success. The data in Appendix A was collected by carrying out
searches on the Intellectual Property Office website <www.ipo.gov.uk>. The principal objective of this research
is to present a relevant and practical insight into the actual trade mark practices of contemporary artists.
Protection without registration
Under the Trade Marks Act 1994 (as amended, hereinafter: TMA 1994) the name or logo of a band does not 2
require a formal registration process in order to be a trade mark; by virtue of being put into commercial use
and thus becoming the sign which distinguishes the services of one artist to that of another, a trade mark has
materialised. 'Distinguishing' is the key word and arguably the entire foundation of trade marks is their ability to
be distinctive and allow the public to identify the source of a product. Whilst it is possible, and indeed sensible,
to register the trade mark in all relevant classes and jurisdictions to secure exclusive rights, to understand the
protection granted to unregistered marks by the common law tort of passing off is very worthwhile: this is
something that many artists have relied upon for protection. A prerequisite for a passing-off action lies in there
being goodwill in the mark; this will likely have been garnered through commercial use of the mark acquiring it
a reputation in the marketplace. Should another party attempt to cash in on this goodwill by using the same
mark, leading to a misrepresentation that might deceive the public and cause damage to the goodwill, then an
action for passing off can be brought against this party. Furthermore if another party attempts to register this
trade mark which has already acquired goodwill then they will be prevented from doing so under section 5(4)(a)
of the TMA 1994 which states that if the law of passing off is already 'protecting an unregistered trade mark'
then the trade mark shall not be registered.
The unpredictability of passing off actions protecting an artist's name highlights a risk in this method. This can 3
be observed when looking at two cases involving identical band names being used by multiple groups, which
had opposite outcomes. The case of Sutherland v V2 Music [2002] EWHC 14 concerned the band name'Liberty',
which had been in use by a British funk group for two decades prior to the arrival of an identically named pop
act that arose from the talent show 'Popstars'. The court opined that the goodwill existing in the name was
sufficient to prevent use by the second group because their continued use would 'effectively destroy such
goodwill as the claimants have'. Whilst in this instance the first group was granted protection and the second
group forced to change their name, the judge did acknowledge how 'borderline' the case was. A case the
following year concerning the use of the artist name 'Blue' had a different outcome, with Mr Justice Laddie
making clear that he found very little merit in the claim that confusion between the two dissimilar acts might
arise. The dispute ended up being settled, with the result of both bands continuing under the same name. This
case weakens the confidence in passing off as an effective means of protection by demonstrating that in the
absence of an official trade mark registration, the law may not offer a defence if another party starts to exploit
the same name. Nonetheless this case may not serve as a particularly strong lesson to emerging artists, since
the opinion of the judge was that the two bands would not in fact be adversely impacted by each other's

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