Andrew Powell v Martin Robert Turner

JurisdictionEngland & Wales
JudgeMr Recorder Douglas Campbell
Judgment Date24 October 2013
Neutral Citation[2013] EWHC 3242 (IPEC)
Docket NumberClaim No. CC12P02133
CourtIntellectual Property Enterprise Court
Date24 October 2013

[2013] EWHC 3242 (IPEC)




Rolls Building,

110 Fetter Lane,




Mr Recorder Douglas Campbell Sitting as an Enterprise Judge

Claim No. CC12P02133

Andrew Powell
Martin Robert Turner

Philip Harris (instructed by Walker Morris LLP) for the Claimant

Madeleine Heal (instructed by Mishcon de Reya) for the Defendants


I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Mr Recorder Douglas Campbell



The Claimant has since 1969 been a member of a large number of different band line-ups which have all traded as "Wishbone Ash". The Defendant has been a member of some of these lineups, including those which span the band's most successful period of 1969 to 1981. The status quo is that the Claimant continues to play in a band of that name today, whereas the Defendant plays in a band called Martin Turner's Wishbone Ash.


The Claimant is the sole registered proprietor of Community Trade Mark No. 742684 (the words "WISHBONE ASH"). The mark was applied for on 9 th February 1998 and registered on 16 th March 2000. It is registered in respect of classes 9, 16, 25, and 41. The class 41 part of the registration states as follows:

"Entertainment services provided by a musical group; musical entertainment services; sound recording and video entertainment services; concert, musical and video performances; television and radio entertainment services; entertainment services by stage production and cabaret; production of video and/or sound recordings; presentation, production and performance of shows, musical shows, concerts, videos and radio and television programmes; recording, film, video and television studio services; audio, film, video and television recording services; publishing; music publishing; television and radio broadcasting; sound recording, film and video production and distribution services; all the aforesaid services not relating to entertainment for children, nor to education of children, nor to a television series for children."


The Claimant issued the claim form in these proceedings on 25 th May 2012. At that stage the Claimant sought relief for infringement of the Community Trade Mark and for passing off. The claim for passing off was dropped on 18 th December 2012.


The trade mark infringement claim relates in particular to (1) the Defendant's use of "Martin Turner's Wishbone Ash" as the name of his band which provides live and recorded musical performances, and (2) the Defendant's use of the domain name The Claimant alleges infringement pursuant to each of Articles 9(1)(a), 9(1)(b), and 9(1)(c) of Council Regulation (EC) No. 207/2009 (the Community Trade Mark Regulation, or CTMR).


The Defendant denies infringement on various grounds. He points out that neither of the signs complained of is identical to the Claimant's registered trade mark (as is required under Art 9(1)(a)). So far as "Martin Turner's Wishbone Ash" is concerned, he relies on the qualifier "Martin Turner's" as dispelling likelihood of confusion. So far as the domain name is concerned he says that the website associated with the Defendant's domain name is a source of honest and accurate information about the Defendant's band, and as such not liable to affect any function of the trade mark within the scope of Art 9 CTMR; and that it is in any event honest descriptive use which is permitted by Art 12(b) CTMR. In relation to Art 9(1)(c), he also denies any detriment to the distinctive character and/or repute of the trade mark.


The Defendant also counterclaims for revocation of the Claimant's Community Trade Mark, but only upon the ground that the mark was applied for in bad faith contrary to Art 52(1)(b) CTMR. In particular the Defendant alleges that the Claimant was dishonest or otherwise fell short of the standards of acceptable commercial behaviour, in that when he filed the application for his Community Trade Mark in his sole name his purpose was to obtain and benefit from exclusive rights in the name Wishbone Ash without any reasonable belief that he was properly entitled to the same.


The Defendant does not allege that the mark is invalid by reason of earlier unregistered rights pursuant to Arts 8(4) and 53(1)(c) CTMR, nor is there any claim (however formulated) to ownership or part ownership of the Claimant's Community Trade Mark per se. The Defendant does however seek an account of such share of the profits made by the Claimant in the 6 years prior to the date of service of the counterclaim as is attributable to the use by the Claimant of the Defendant's share of the goodwill attaching to the Wishbone Ash name generated by the First Wishbone Ash, or to interest at 5% per annum on such share following the valuation thereof.


It is worth adding that the case does not involve any dispute about copyright. The Defendant accepted that he continued to receive royalties relating to the original songs and recordings which were made by the band in its 1970s heyday.


The matter came on before me for trial on 19 th and 20 th September 2013. The Claimant was represented by Mr Philip Harris, a trade mark attorney, and the Defendant was represented by Ms Madeleine Heal of counsel. The major issue at trial was that of bad faith. The issue of infringement occupied much less time, and was largely concerned with the use of "Martin Turner's Wishbone Ash" as the name of the Defendant's band rather than the domain name. I am grateful to both advocates, and to those instructing them, for their focus on the key issues. This allowed a trial of some legal and factual complexity to be heard within 2 days.

The witnesses


The Claimant's witnesses were as follows:

(a) Mr Andrew (Andy) Powell himself, as lead witness. His evidence covered the history of the band; the history of his disputes with the Defendant; and his application for the trade mark in suit in 1998.

(b) Mr Guy Roberts, who has been a fan of Wishbone Ash since the 1970s. He has been in charge of the Wishbone Ash fan club and fanzine (called "Hot Ash") since December 1996, and has run its "Ashcon" annual conventions since 1998/1999.

(c) Mrs Nicola Bowden, who is the Art and Leisure Manager at the Mick Jagger Centre in Kent. She gave evidence about two performances there by the Claimant's band.

(d) Mr Martin Looby, proprietor of South Yorkshire Musical Enterprises. He was the international booking agent for Wishbone Ash for at least part of the period from 1992 to 1999. He gave evidence about a 1995 Wishbone Ash tour in which the Defendant had participated, and about his advice to the Claimant to register the name of the band as a trade mark.

(e) Mr Andrew Nye, owner of the entertainment and music agency Andy Nye Music Limited. His agency has been the exclusive booking agent for Wishbone Ash in the UK since December 1999. He dealt with the activities of the Defendant's band since 2005, and produced figures showing that the Claimant's band's gross income had declined since 2007.

(f) Mr Leon Tsilis, a semi-retired former record executive with MCA Records. MCA Records is the label for whom Wishbone Ash recorded between 1970 and 1981. Mr Tsilis, who gave his oral evidence via video link, had first seen the band in 1971 and became particularly involved with them (both via MCA and outside of working hours) around 1975. He helped the Claimant launch his website, at, in or after 1995, and in around 1997 he also became involved with the "Hot Ash" fanzine. Mr Tsilis also gave evidence about his involvement in the Claimant's decision to apply for the trade mark in suit.

(g) Mrs Kate Goldsmith, the publicist for Wishbone Ash in the USA. She has been a fan of Wishbone Ash for approximately 25 years, and gave evidence about the way in which performances by the Defendant's band were promoted in the USA this year. She was also cross-examined by video link.

(h) Mr Keith Fox, who is now and has been since 1992 a detective constable in the South Yorkshire police force. He has been a fan of Wishbone Ash since the age of 17, particularly since his interest was renewed in early 2006. He had seen performances given by both bands, and was not impressed with the musical quality of the performances given by the Defendant's band. His statement focussed on Google Alerts he had received which related to the Defendant's band and which he considered to be misleading, but included some other incidents which had involved him personally.

(i) Mr Joseph Crabtree, the drummer in the current lineup of Wishbone Ash since March 2007. His evidence related to various emails which he had received, and web entries which he had seen, which in his view demonstrated confusion between his (ie the Claimant's) band and the Defendant's band. He was made available for cross-examination at trial but the Defendant indicated it did not want to cross-examine him.

(j) Ms Helen Peter-Thomas, a trade mark attorney with Walker Morris LLP (the Claimant's legal representatives). She was briefly cross-examined on evidence she had given in relation to OHIM proceedings.


The Defendant's witnesses were as follows:

(a) Mr Martin Turner himself, as lead witness. His evidence covered the history of the band; the history of his disputes with the Claimant; and the reasons why he believed his band was entitled to perform as "Martin Turner's Wishbone Ash".

(b) Mr Steven Forster, an event promoter. He explained that he was aware of the Claimant's and Defendant's bands, and that he knowingly chose to book "Martin Turner's Wishbone Ash" for the High Voltage Festival of classic rock in July 2010. He did not believe fans would be confused as...

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