The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra)

The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra)

The CTM 'The Ukulele Orchestra of Great Britain' is invalidly registered as it is descriptive and lacks acquired distinctiveness in all relevant Member States, specifically not proven in Malta, Cyprus, Denmark, or Luxembourg. The claimant failed to discharge the burden of proof for acquired distinctiveness. The passing off claim succeeds as the claimant established goodwill, misrepresentation, and damage. The copyright claim fails as the alleged dramatic works lack sufficient certainty and unity to qualify for copyright protection.

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, Passing Off, Copyright) / Final Judgment After Trial
Outcome
CTM declared invalid; passing off claim succeeds; copyright claim dismissed; application to strike out dismissed.
Legal Topics
Trade Mark Infringement, Passing Off, Copyright Infringement, Community Trade Mark Regulation, Acquired Distinctiveness, Descriptiveness, Jurisdiction, Remedies
Intellectual Property Civil Procedure Trade Mark Infringement Passing Off Copyright Infringement Community Trade Mark Regulation Acquired Distinctiveness Descriptiveness +2 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, Passing Off, Copyright) / Final Judgment After Trial

Legal Issues

  1. 1 Whether the claimant's Community Trade Mark (CTM) is valid or invalid under Articles 7 and 52 of the CTM Regulation
  2. 2 Whether the defendants infringed the CTM under Articles 9(1)(b) and 9(1)(c)
  3. 3 Whether the defendants have a defence under Article 12(b)

Ratio Decidendi

The CTM 'The Ukulele Orchestra of Great Britain' is invalidly registered as it is descriptive and lacks acquired distinctiveness in all relevant Member States, specifically not proven in Malta, Cyprus, Denmark, or Luxembourg. The claimant failed to discharge the burden of proof for acquired distinctiveness. The passing off claim succeeds as the claimant established goodwill, misrepresentation, and damage. The copyright claim fails as the alleged dramatic works lack sufficient certainty and unity to qualify for copyright protection.

Court Disposition

CTM declared invalid; passing off claim succeeds; copyright claim dismissed; application to strike out dismissed.

Orders

  • Declaration of invalidity of CTM No. 009477341
  • Passing off injunction against Yellow Promotion (scope to be determined)