Ian Thomas v Luv One Luv All Promotions Ltd
| Jurisdiction | England & Wales |
| Judge | Nicholas Caddick |
| Judgment Date | 27 April 2022 |
| Neutral Citation | [2022] EWHC 964 (IPEC) |
| Docket Number | Claim No. IP-2019-000170 |
| Court | Intellectual Property Enterprise Court |
[2022] EWHC 964 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
Fetter Lane
London EC4A 1NL
Nicholas Caddick Q.C.
(sitting as a Deputy High Court Judge)
Claim No. IP-2019-000170
Aaron Wood, trade mark attorney with Brandsmiths SL Limited for the Claimant
Michael Hicks, Counsel, instructed by Higgs LLP for the Defendants
Hearing dates: 15 and 16 March 2022
Nicholas Caddick Q.C. (sitting as a Deputy High Court Judge):
This is a passing off claim. The issue is who is entitled to use the name “Luv Injection” in relation to a Jamaican sound system. The principal parties, the Claimant and the Second Defendant, are half brothers and, for convenience, I will refer to them as Ian and Winston. The First Defendant, Luv One Luv All Promotions Limited, is a promotion company controlled by Winston.
Jamaican Sound Systems
A Jamaican sound system (or “Sound” for short) consists of equipment for playing music and a group of members. Some members perform front of house. These include a person to select and play the music records and another person (the “mic-man”) who is on a microphone, entertaining and engaging with the audience. There are other members who play a more back stage role such as looking after and maintaining and running the equipment.
A Sound may perform at both public and private events, such as parties or dances. They may also perform in what are known as “clashes”. A clash is where rival Sounds compete with each other to see which, by popular acclaim at least, has put on the better show. For these clashes, a Sound will often use specially customised recordings, preferably by well-known artists and of well-known songs but using lyrics that have been re-written to praise (“toast” or “big up”) the excellence of that Sound and of its members or some of them. These recordings are referred to as dub plates.
Luv Injection
In around 1986, Ian and Winston and some others formed a under the name Luv Injection. At that time, Ian (whose stage name was “King Zukie” or “Zukie”) acted as a selector and/or as a mic-man for the group, whereas Winston (sometimes referred to as the “Mexican”) was more involved in the group's administration and management, acting essentially as its manager, although on occasions he also performed a front of house role as a mic-man. There is a dispute as to the identities of the other members of the group, although it is agreed that they included Orville Higgins (usually called “Billy” or “Corporal Billy”) and Colin Little.
Sadly, Ian and Winston fell out after an incident at a Luv Injection event in Oxford in July 2016. Their relationship deteriorated and they never again performed together as Luv Injection. It has already been determined in litigation between the parties that the split took place in October 2016 and, for present purposes, I do not need to comment further on its causes or on the attempts to resolve matters. However, after the split, Winston continued to perform as Luv Injection with a new group and there is evidence of that group performing at events in October, November and December 2016 and continuing thereafter.
Subsequently, Ian also started to perform as Luv Injection with his own new group (including Billy and Mr Little). Their first public event was in Coventry on 26 August 2017.
In the pleadings, the original Luv Injection (which was dissolved by the split in October 2016) was referred to as “Luv Injection 1”, the new group involving Ian as “Luv Injection 2” and the new group involving Winston as “Luv Injection 3”. For convenience, I will do the same although, as set out above, Luv Injection 3 (Winston's new group) was actually formed and was performing before Luv Injection 2 (Ian's new group).
History of proceedings between the parties
In February 2017, a few months after the split of Luv Injection 1, Winston filed an application to register the name “Luv Injection” as a trade mark, which application was successful. Then, in October 2017, he filed a further application to register that name. In early 2018, Ian applied to the UK Intellectual Property Office (UKIPO) seeking to invalidate Winston's earlier registration and opposing Winston's further application. Ian's application succeeded for the reasons set out in a decision of a UKIPO Hearing Officer dated 27 June 2019 (O-359-19). In essence, the Hearing Officer decided (see, especially, at [58] of the Decision) that, at the date of the split (which the hearing Officer found was in 2016), goodwill in the name “Luv Injection” had been owned by the members of Luv Injection 1 as a partnership. On that basis, and because there had been no subsequent transfer of that goodwill to Winston, he concluded that Winston was not personally entitled to the goodwill in the name and was not, therefore entitled to register the name as his trade mark.
After this, on 21 October 2019, Ian issued the current proceedings alleging passing off by Winston. In its original form, Ian's claim was that he personally was entitled to bring the proceedings and that, as a result of the decision of the Hearing Officer, Winston was estopped from denying that entitlement. This argument was accepted by HHJ Melissa Clark who, on 17 June 2020, made an order striking out most of Winston's then defence. Winston's appeal from that Order was allowed, in part, by the Court of Appeal on 20 May 2021 (see [2021] EWCA Civ 732). In view of the decision of the Hearing Officer, the Court of Appeal agreed that Winston could not claim that he alone owned the goodwill in the name after the 2016 split. However, it found that there was nothing in the Hearing Officer's decision to prevent Winston from relying on alternative arguments. As appears from the judgment of Lewison LJ, one of those alternative arguments was that the relevant goodwill was not owned by Ian but was a partnership asset owned by the members of Luv Injection 1 and that, as Winston was one of those members, only the partners as a whole could sue him for passing off.
In the light of the Court of Appeal's judgment, there was some further debate as to what was properly in issue and what Ian, as Claimant, was entitled to assert in view of the earlier decisions. This resulted in an Order of HHJ Hacon on 25 October 2021 listing various points that Ian was not entitled to put forward. A subsequent Order of HHJ Hacon, made on 1 February 2022, then sought to define exactly what was and what was not in issue in the present action.
Ian's case as it is now formulated in his Re-Amended Particulars of Claim is that:
a. Luv Injection 1 had traded as a partnership at will which had ended with the split in October 2016 (see paragraph 3 of the Re-Amended Particulars of Claim).
b. Although, at the date of the split, the goodwill in the Luv Injection name was a partnership asset owned by the Luv Injection 1 partnership (see paragraph 16 of the Re-Amended Particulars of Claim), that goodwill is now owned by Ian personally (his primary case) or, if not by him, by the Luv Injection 2 partnership such that Ian can enforce it in his capacity as one of the partners in Luv Injection 2 (see paragraph 9 of the Re-Amended Particulars of Claim).
c. The pleaded basis for this change in ownership of the goodwill is that:
i. After the split, Winston had done nothing to obtain his share of the goodwill of Luv Injection 1 (see paragraph 7 of the Re-Amended Particulars of Claim); and
ii. “As the ‘front of house’ and prominent members of LOVE INJECTION 1, the Claimant and the other two surviving founder members (but not the Second Defendant) have appropriated the goodwill stemming from LOVE INJECTION 1. This will have occurred because the members of LOVE INJECTION 2 which were part of LOVE INJECTION 1 were individuals that were seen by members of the public as the musical members” (see paragraph 8 of the Re-Amended Particulars of Claim).
d. Winston, by using the name Luv Injection for his new group (Luv Injection 3), is passing off his goods and services as those of Ian (see paragraph 27 of the Re-Amended Particulars of Claim).
e. Winston, by using dub plates which “toast” Luv Injection and mention Ian and/or Billy, is also passing off Luv Injection 3 as being Luv Injection 1 or, in the alternative, passing it off as being connected with Ian (see paragraph 30 of the Re-Amended Particulars of Claim).
f. A further trade mark (for Luv Injection Sound) which Winston has registered, should be declared invalid on the basis that its use also amounts to passing off (see paragraphs 34–35 of the Re-Amended Particulars of Claim).
Winston denies passing off whether by his use of the Luv Injection name or by his use of any dub plate and he denies that the further trade mark should be declared invalid. Further, by way of counterclaim, Winston seeks an order that the affairs of the Luv Injection 1 partnership should be wound up in accordance with s.35 of the Partnership Act 1890 and its assets (including, he says, the goodwill in the name) distributed between its partners.
The Witnesses
I heard evidence from a number of witnesses. For Ian, I heard from Ian himself and also from Mr Little, both of whom were cross examined. There was also a statement from Grantley Haynes, whose evidence was accepted by Mr Hicks without any need for cross examination. There were a few surprising aspects to Ian's evidence. For example, notwithstanding that the earlier decisions had found that the split had occurred in 2016 and, that his own pleaded case repeatedly referred to the date as having been October 2016, Ian's oral evidence was that the split had actually occurred much later, in July 2017. Despite this, I find that he...
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