The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015)

The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015)

The CTM 'The Ukulele Orchestra of Great Britain' is descriptive in relation to concert services and CDs/DVDs for the English-speaking average consumer in the EU and thus invalid under Article 7(1)(c). UOGB failed to prove acquired distinctiveness in all relevant Member States, particularly Malta, Cyprus, Denmark, and Luxembourg. Therefore, the CTM is invalid and there is no infringement. The application to strike out the Defence for abuse of process was dismissed as unfounded.

Citation
[2015] EWHC 1772 (IPEC)
Parties
Claimant: The Ukulele Orchestra of Great Britain; First Defendant: Erwin Clausen; Second Defendant: Yellow Promotion GmbH & Co. KG t/a The United Kingdom Ukulele Orchestra
Jurisdiction
England and Wales
Judgment Date
02 July 2015
Procedural Posture
Intellectual Property (trade Mark) Infringement and Invalidity Counterclaim / Judgment After Trial
Outcome
CTM declared invalid; claim for infringement dismissed; application to strike out Defence dismissed.
Legal Topics
Community Trade Mark Regulation, Trade Mark Distinctiveness, Acquired Distinctiveness, Absolute Grounds for Refusal, Likelihood of Confusion, Passing Off, Copyright
Intellectual Property Trade Marks Community Trade Mark Regulation Trade Mark Distinctiveness Acquired Distinctiveness Absolute Grounds for Refusal Likelihood of Confusion Passing Off +1 more

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Parties

The Ukulele Orchestra of Great Britain

Claimant

Erwin Clausen

First Defendant

Yellow Promotion GmbH & Co. KG t/a The United Kingdom Ukulele Orchestra

Second Defendant

Procedural Posture

Intellectual Property (trade Mark) Infringement and Invalidity Counterclaim / Judgment After Trial

Legal Issues

  1. 1 Whether the Community Trade Mark (CTM) 'The Ukulele Orchestra of Great Britain' is invalid under Article 7(1)(b), (c), (d), and (g) of the CTM Regulation
  2. 2 Whether the CTM has acquired distinctiveness under Article 7(3)/52(2)
  3. 3 Whether the defendants infringed the CTM under Article 9(1)(b) and (c)

Ratio Decidendi

The CTM 'The Ukulele Orchestra of Great Britain' is descriptive in relation to concert services and CDs/DVDs for the English-speaking average consumer in the EU and thus invalid under Article 7(1)(c). UOGB failed to prove acquired distinctiveness in all relevant Member States, particularly Malta, Cyprus, Denmark, and Luxembourg. Therefore, the CTM is invalid and there is no infringement. The application to strike out the Defence for abuse of process was dismissed as unfounded.

Court Disposition

CTM declared invalid; claim for infringement dismissed; application to strike out Defence dismissed.

Orders

  • Declaration of invalidity of Community Trade Mark No. 009477341 for lack of distinctiveness under Article 7(1)(c)
  • Claim for trade mark infringement dismissed