Decision Nº O/148/14 from Intellectual Property Office - (Trade market), 3 April 2014
| Judge | Mr Geoffrey Hobbs QC |
| Registration Number | UK00002540311 |
| Date | 03 April 2014 |
| Administrative Decision Number | O/148/14 |
| Court | Intellectual Property Office (United Kingdom) |
O-148-14
TRADE MARKS ACT 1994
IN THE MATTER OF:
APPLICATION No. 83820 IN THE NAME OF RAY ENNIS
FOR RECTIFICATION OF THE REGISTRATION OF
TRADE MARK No. 2540311 IN THE NAME OF ALAN LOVELL
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DECISION
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1. By registering the name THE SWINGING BLUE JEANS as a trade mark under
number 2540311 with effect from 26 February 2010, Alan Lovell sought and obtained the
right to prevent others from using it without his consent in the course of trade in the
United Kingdom as an indication of trade origin in relation to ‘Entertainment in the form
of live musical performances; entertainment and musical services; production of music
shows; production of musical works in a recording studio; recording of music; band
performances’ in Class 41.
2. The registration (if it was valid) enabled him to control for his own benefit the
commercial exploitation of a substantial chunk of the goodwill and reputation generated
by the collective efforts of the members, past and present, of a well known group of
musical performers called THE SWINGING BLUE JEANS. This was a group with a
long history. It was formed in 1957. Until 1963 it was called THE BLUE GENES. From
then onwards, live and recorded performances of members of the group performing
GH/Decision 3 April 14
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together were delivered, commercialised and promoted under and by reference to the
name THE SWINGING BLUE JEANS.
3. Ray Ennis was a founder member of the group. He performed as a member of it
(as vocalist and on guitar) from 1957 down to and beyond the date on which Alan Lovell
unilaterally applied to register THE SWINGING BLUE JEANS as his trade mark (10
February 2010). At the date of the application for registration, Alan Lovell had been
performing as a member of the group (on lead guitar) for approximately 11 years.
4. Ray Ennis knew nothing of the application for registration until June 2010. On 16
June 2010 he sent an email to Alan Lovell saying:
Just got back to some disturbing news. Apparently you
registered the Swinging Blue Jeans in your name in February
without my permission or without mentioning it on the
whole of the tour. As I have been trading under the name for
50 yrs and still am until next year what you have done is
illegal and possibly fraudulent. How you could do this is
beyond me as I thought we had a good relationship. Can you
please explain why! I look forward to hearing from you.
5. Alan Lovell replied by email later the same day. At that stage he was quite
contrite. He said:
... So I did a search through solicitors to find out if the name
was available. I had to wait until last week to know that it
was. So it was registered last week. Not in February. I was
going to ring to tell you this morning. The reason I didn’t say
anything on the tour was I didn’t know if I would get it or
not? I am only trying to stop Diccon going out as The SBJs.
There can’t be 2 SBJs the agents will not go for it. You said
it was OK for me to use the name. .... The agents certainly
want to book us. Not the other lot. I’m sorry I have offended
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