Byford v Oliver and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Laddie:,Mr Justice Laddie |
| Judgment Date | 25 February 2003 |
| Neutral Citation | [2003] EWHC 295 (Ch) |
| Docket Number | Case No: CH/2002/APP/937 |
| Court | Chancery Division |
| Date | 25 February 2003 |
[2003] EWHC 295 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Laddie
Case No: CH/2002/APP/937
On Appeal to the High Court From the Trade Marks Registry in the Matter of the Trade Marks Act 1994 and
In the Matter of Trade Mark No. 2,150,052 for the Mark Saxon in Classes 9, 16 and 41 Registered in the Names of Graham Oliver and Steven Dawson and
In the Matter of an Application by Peter Byford for a Declaration of Invalidity thereof
Mr Andrew Norris (instructed by Gersten and Nixon for the Appellant)
Mr Nicholas Saunders (instructed by Hamlins for the Respondents)
Hearing date: 7 February 2003
APPROVED JUDGMENT
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.
Introduction
This is an appeal from the Decision of Mr Mike Foley for the Registrar of Trade Marks dated 7 November 2002, in which he dismissed an application for a declaration of invalidity in respect of trade mark number 2150052. The appellant applicant is Mr Peter Byford. The respondent proprietors of the mark are Mr Graham Oliver and Mr Steven Dawson. The mark consists of the word SAXON. It is registered in classes 9, 14 and 16 in respect of a wide range of products and services including records, the presentation of live performances, musician services and the production of live shows.
The application by Mr Byford is based on section 3(6) and section 5(4)(a) of the Trade Marks Act 1994 which provide as follows:
"3(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith."
"5(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade,…
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark."
The registration of the mark and Mr Byford's application to have it declared invalid arise out of the ebb and flow of membership of a heavy metal band called SAXON. Although there are some facts in dispute, the following brief history of the band is substantially uncontested.
Use of the name SAXON prior to registration
Mr Byford, Mr Dawson and Mr Oliver were, with others, members of a heavy metal band which was formed in the 1970's. It originally performed under the name SON OF A BITCH. In the late 1970's, it changed its name to SAXON. Mr Dawson left the band in 1985, some 12 years before the date of filing of the trade mark application in suit. He was replaced by another musician. In 1995, Mr Oliver left the band. He also was replaced. The band has continued to perform and issue records under the SAXON name. Mr Byford has continued to be a member of the various manifestations of the band throughout its history.
Mr Dawson and Mr Oliver have continued to perform as heavy metal musicians in another band. This has given rise to friction It appears that Mr Byford and his band accused Mr Dawson and Mr Oliver of passing off by performing in a group which incorporated the word SAXON within its name. That was followed by Mr Oliver and Mr Dawson applying for the current trade mark Soon after doing so, Mr Oliver, but not Mr Dawson, brought High Court proceedings against Mr Byford and others. He alleged that the original SAXON band had carried on business as a partnership at will and that he had been wrongfully expelled from it in February 199He claimed a declaration that the partnership had been dissolved with effect from the date of his dismissal and an account of partnership capital and income. Mr Byford entered a defence and counterclaimed for passing off. Apparently the action was struck out after all the parties' public funding was withdrawn at the behest of Mr Byford.The counterclaim has proceeded no further. Recently Mr Oliver has asserted that registration of the mark has given him and Mr Dawson exclusive rights in the name SAXON in the entertainment industry which are being infringed by Mr Byford's continued performance in a heavy metal band bearing that name. I will return to the details of this assertion later.
Ignoring for the moment the allegations made in the court proceedings referred to above and the claims made on the back of the registration, the use of SAXON appears to have been as follows. As has been mentioned already, the name was initially adopted by a band of which Mr Oliver, Mr Dawson, Mr Byford and others were members. The membership has changed from time to time. Each time a member departed the remaining members reformed with replacement musicians. On each occasion, the phoenix band used the name SAXON.
The history of Mr Oliver and Mr Dawson is as follows. Mr Oliver formed a group which performed under the name "GRAHAM OLIVER's SAXON" although when it was formed, and for how long and how extensively it performed is not disclosed in the evidence. In the late 1990's Mr Oliver, Mr Dawson and others performed as a group called "SON OF A BITCH". It will be recalled that this is the name which had been used by the original Byford/Oliver/Dawson heavy metal band in the 1970's before it adopted the name SAXON.
In paragraph 13 of a supplemental witness statement made in the High Court proceedings and exhibited to a witness statement in the current application, Mr Byford asserted:
"… I learned that Graham Oliver had obtained representation in the United States and Graham Oliver had similarly claimed he was entitled to use the name Saxon…"
That produced a response in a witness statement given by Mr Rupert Withers who describes himself as the manager of "the band OLIVER/DAWSON SAXON". His is the only evidence filed on behalf of the proprietors. It includes the following:
"2. … In paragraph 13 [of Mr Byford's statement] it is alleged that Graham Oliver claimed that he was entitled to use the name Saxon. In our letter to Artists Worldwide (our exhibit B), it clearly states that "all references to the band must be 'Oliver Dawson Saxon"…
Graham Oliver & Stephen Dawson maintain that they have not been passing off as the band known as Saxon. Their legal advisors have all maintained that providing they distinguish themselves as separate from Mr Byford's band, they are not 'passing off'. (Our exhibit H) In this respect the band have been performing as 'Oliver/Dawson Saxon', or earier (sic) as Graham Oliver's Saxon. In all official publicity material it has been clearly stated who was performing on the shows, and on the album.
We have been advised by our legal teams that by differentiating between the bands, we are not passing off as Mr Byford's band. In fact, we trade under a limited company (along with the other members of our current band, Nigel Durham, Haydn Conway & John Ward) as Oliver Dawson Saxon Ltd."
Perhaps surprisingly, Mr Withers exhibits the letter of advice given to Mr Oliver by his solicitors. Insofar as material, it reads:
Although it is important that you do not hold yourself out and confuse members of the public into believing that you are still connected with [Mr Byford's] band, we do not believe, as discussed with Counsel, that use of the name 'GRAHAM OLIVER's SAXON' amounts to passing off, provided that the words 'Graham Oliver' are given sufficient prominence, and the members of your band are clearly listed. In this case, provided that you are not representing your band to be associated with that of the Defendants, such representation should not amount to passing off."
It follows that the only bands which have performed under the name SAXON alone are those in which Mr Byford has been a member. Consistent with the advice given in their lawyer's letter and Mr Withers' evidence, Mr Oliver and Mr Dawson do not claim to have performed under the name SAXON alone nor, according to that evidence, do they have any intention of doing so. The possibility that confusion would be likely were both their and Mr Byford's band to perform as SAXON has been and will be addressed by the proprietors' band distinguishing itself from Mr Byford's by prominent use of the words GRAHAM OLIVER's or OLIVER DAWSON with SAXON.
Before turning to consider the two grounds advanced in support of the attack on the registrations, there is one other matter which should be noted. Mr Saunders, who appears on behalf of the proprietors, reasserts the point made in Mr Oliver's High Court pleadings, namely that while his clients and Mr Byford were members of the original SAXON it was a partnership at will. That partnership was dissolved when Mr Dawson left 18 years ago. The group that then performed under the SAXON name was a new partnership at will until it also was dissolved by Mr Oliver's departure in early 1995. Whether the members of the post—1995 band called SAXON were members of a new partnership or were performing as sole traders is not a matter which was addressed by Mr Saunders or Mr Norris, who appears for Mr Byford.
Use of the registered rights by the proprietors
Consistent with the stance adopted in the High Court proceedings and by Mr Saunders on this appeal, in the evidence given on behalf of the proprietors it is said that the mark was registered "in good faith on behalf of the original partnership". What is meant by that claim can be gauged by the use made of the mark once registered. In his supplementary witness statement, Mr Byford complains of various threats made against him and his band by and on behalf of the registered...
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