Cavern City Tours Limited v Cavern Records Limited
| Case Outcome | Application Successful |
| Respondent | Cavern Records Limited |
| Date | 28 April 2020 |
| Registration Number | 11534704 |
| Court | Company Names Tribunal (EW) |
| Administrative Decision Number | 11534704,O/262/20 |
In the matter of application no. 1912 for a change of company name registration no. 11534704
Backround and pleadings1. The company name CAVERN RECORDS LIMITED (“the primary respondent”) has been registered since 24 August 2018 under number 11534704. The matter comes before us by way of an application filed on 11 January 2019 by Cavern City Tours Limited (“the applicant”) under section 69 of the Companies Act 2006 (“the Act”), which is as follows:
“69. (1) A person (“the applicant”) may object to a company’s registered name on the ground―
(a) that it is the same as a name associated with the applicant in which he has goodwill, or
(b) that it is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant.
(2) The objection must be made by application to a company names adjudicator (see section 70).
(3) The company concerned shall be the primary respondent to the application.
Any of its members or directors may be joined as respondents.
(4) If the ground specified in subsection (1)(a) or (b) is established, it is for the respondents to show―
(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or
(b) that the company―
(i) is operating under the name, or
(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or
(iii) was formerly operating under the name and is now dormant; or
(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or
(d) that the name was adopted in good faith; or
(e) that the interests of the applicant are not adversely affected to any significant extent.
If none of these is shown, the objection shall be upheld.
(5) If the facts mentioned in subsection 4(a), (b) or (c) are established, the objection shall nevertheless be upheld if the applicant shows that the main purpose of the respondents (or any of them) in registering the name was to obtain money (or other consideration) from the applicant or prevent him from registering the name.
(6) If the objection is not upheld under subsection (4) or (5), it shall be dismissed.
(7) In this section “goodwill” includes reputation of any description”.
2. Mr Alan Frank Challoner, who is a director of the primary respondent, has been joined to the proceedings as a co-respondent in accordance with s. 69(3) of the Act.
3. The applicant claims that use of “CAVERN”/ “THE CAVERN”/ “THE CAVERN CLUB”/ “CAVERN CLUB” began in 1957 in Mathew Street, Liverpool by the applicant or its predecessor in title. The applicant claims that THE CAVERN CLUB is considered the cradle of British pop music as it was the birthplace of the Beatles and has in subsequent years welcomed acts such as Stevie Wonder, Queen and Adele. The applicant claims that it has goodwill in relation to the following goods and services:
Wholesaling and retailing of CDs, DVDs; pre-recorded music, pre-recorded CDs, pre-recorded DVDs, pre-recorded films; records (sound recordings); organisation and delivery of live musical performances and concerts, live music services, live music shows, arrangement of musical performances, entertainment and shows; provision of musical entertainment; nightclub and bar services; cabaret services; entertainment services.
4. The applicant also claims that use of “CAVERN RECORDS” began in 1994 in Mathew Street, Liverpool, by the applicant or its predecessor in title in relation to the following goods and services:
Gramophone records; DVDs, CD-ROMSs DVD-ROMs, digital media; compact discs; sound and/or video cassettes; magnetic tapes bearing sound recordings; cassettes for the storage of, or containing, tapes for bearing sound recordings; cassettes for the storage of, or containing, tapes for bearing sound or video recordings; magnetic tapes, discs, and magnetic wires, all for sound or video recording; sound and/or video recording on corresponding recording carriers; apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, and information; photographic and cinematographic apparatus and instruments; television and radio apparatus; sound or video reproduction apparatus; reproductions of sound and/or video in electronic and digital form; record production and music publishing; distribution of audio/visual products, music and sound recordings.
5. The applicant owns UK and EU trade marks, both word and figurative, which are or include “CAVERN RECORDS”/ “CAVERN CLUB”/ “THE CAVERN”. These trade marks have application dates between 2008 and 2015 and are registered for various goods and services in, inter alia, classes 9 and 41.
6. The applicant claims that a store named CAVERN RECORDS LIMITED is likely to lead third parties to believe that the respondent’s business is that of the applicant, or that it is connected to it. This will result in damage to the applicant.
7. The applicant asks that the name be removed from the Companies Register and that the co-respondent be ordered not to take steps which result in another name which is offending being registered.
8. The primary respondent filed a notice of defence denying the applicant’s grounds. We note, in particular, that the primary respondent:
- Claims that it has been operating record shops since 1977, trading as “Cavern Records” and that it has been prominent in the music industry, featuring in television programmes, books and films and appearing at trade shows internationally;
- Claims that it believes that it traded first under the name Cavern Records;
- Denies that it acted in bad faith and claims that, to show good faith, it has not traded as Cavern Records since registering the name.
9. Two documents are attached to the defence. The first is a photograph from Google Earth of a shop front which bears the name “CAVERN RECORDS” and a London telephone number, which is dated November 2008. The second is a print from www.yelp.co.uk showing a review for Cavern Records (at a London address) dated 15 November 2008.
10. The primary respondent indicates that it also relies on the defences under ss. 69(4)(a), (b), (c) and (d) of the Act.
11. The applicant is represented by Forresters IP LLP. The respondents are unrepresented litigants. Only the applicant filed evidence. The parties were asked if they wanted a decision to be made following a hearing or from the papers. Neither side chose to be heard. The applicant filed written submissions in lieu of a hearing, which we will bear in mind.
12. Both parties seek an award of costs.
Evidence13. We will only summarise the evidence to the extent we consider necessary.
14. Only the applicant filed evidence. This consists of a witness statement and 31 exhibits from George William Guinness, a director of the applicant.
15. Mr Guinness gives a history of “The Cavern Club”, which opened on 16 January 1957 at 10 Mathew St, Liverpool. It was originally a jazz venue but expanded its acts and, on 9 February 1961, the Beatles became the house band of the club, where they performed for the following three years. The club appears to have closed in 1973, after which it was demolished. Mr Guinness says that “The Cavern Club of today” was rebuilt on the same site using bricks from the original cellar and is “an exact replica” occupying 75% of the original space.
16. An exhibited Wikipedia article, last edited on 27 July 2018, indicates that the Cavern Club closed in May 1973 and reopened in 1984, only to close in 1989 before it was finally opened again in 1991[footnote 1]; The article states that acts such as Adele, Jessie J and Oasis have used the venue as a tour warm-up venue; the Arctic Monkeys are said to have done so in October 2005 and Jake Bugg in November 2013. It notes that the front room of the venue is the “main tourist attraction”.
17. The venue appears to have a “wall of fame”. Articles dated 2012 and 2014 from the website www.cavernclub.org reference new additions; there is also an article from www.liverpoolecho.co.uk which refers to a member of the Monkees playing at the club and getting his own brick in the wall[footnote 2];
18. Mr Guinness refers to two performances by Paul McCartney at the Cavern Club. The first was on 14 December 1994. It is said that over 1 million people applied for the 300 available tickets and that the concert headlined every British daily newspaper the following day. The recording was later released on DVD under the title “Paul McCartney: Live at the Cavern Club!”. Wikipedia articles are provided which reference this performance and the DVD release.[footnote 3]; Paul McCartney is said to have performed again at the venue on 26 July 2018. A BBC news article is provided which is said to concern this concert[footnote 4]; Much of it is illegible but is entitled “Sir Paul McCartney rolls back the years in Cavern comeback (but no phones please)” and there is a visible reference to “the Cavern Club” and 250 attendees.
19. An article dated 6 January 2011 from the Liverpool Echo is provided, which reports a performance of Adele at “Liverpool’s famous Cavern Club”, ahead of the release of her best-selling “21” album[footnote 5];
20. Contracts between the applicant and various artists are provided for performances on 17 March 2016, 24 February 2017, 20 April 2017 and 30 November 2017, all at the Cavern Club[footnote 6]; Also included are an invoice and a press release for performances at the Cavern Club on 21 and 27 June 2017, as well as information about some of the artists[footnote 7];
21. There is exhibited an agreement between the applicant and the Bootleg Beatles for a performance at the Philharmonic Hall, Liverpool on 28 August 2017, along with website prints advertising the performance...
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