Byford v Oliver & Anor

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.

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 1995. He 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’”…

3.

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. …

20.

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:

“5.

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.

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 proprietors. Only two examples of this need be referred to. On 27 March 2001 a letter, purporting to have been written by Mr Oliver was sent to a Mr Palling who was selling merchandise relating to Mr Byford’s band bearing the word SAXON. It is in the following terms:

“To whom it may concern

Re: Saxon

As you may be aware Steve Dawson and myself were the original founder members of Saxon along with Pete Gill, Peter ‘Biff’ Byford and Paul Quinn make up the Saxon partnership that performed under the name Saxon.

I understand that you may have been involved in the past, or are still involved in some way or other with the affairs of Biff Byfords’ act. I must advise that Mr Byfords’ act, which he advertises as Saxon, does not contain the original members Graham Oliver, Steve Dawson or Pete Gill. Furthermore I must advise that Steve Dawson and I own the trademark to the name SAXON (Trademark No 2150052). Therefore permission to use the name within the entertainment industry must be obtained from the trademark holders (namely Steve Dawson & myself). To my knowledge permission has not been sought which has led to, but may not be limited to the following breaches

Class 16 - use of the name Saxon on any printed matter without permission. This extends to advertising, tickets, record releases etc

Class 41 - use of the name Saxon to present live performances

Using the Saxon name to promote Mr Byfords’ act is extremely damaging. I must therefore insist that you cease and desist forthwith from presenting or advertising the Saxon name in any way whatsoever until this matter has been discussed. Furthermore, all publicity material, advertising etc bearing the word Saxon must be immediately withdrawn from circulation and all relevant parties notified accordingly.

Steve Dawson and myself as the trademark holders are entitled to seek recompense and advise that unless this matter is addressed immediately, you will leave us with no alternative but to instruct our solicitors to take appropriate action without further notice.

Graham Oliver”

Mr Oliver’s and Mr Dawson’s new band employed a firm called Total Concept Management (“TCM”) as its agent. Besides sending out warning missives which reproduce most of the above letter, it also sent an e-mail to someone promoting Mr Byford’s band which reads as follows:

“Please note that should you use the SAXON name to promote this concert we will take legal action against your company. Oliver & Dawson own the name SAXON as per the trademark documentation that I sent you. Full details of our discussions and e-mails have now been passed to a lawyer and a legal notice will be issued against your company. Should you promote Biff Byford as SAXON Legal action will take place with immediate effect. I require your assurance and written confirmation that you will not promote this act as SAXON. …”

Mr Withers’ explanation for these communications is as follows:

“Unfortunately TCM have copied a letter attributed to Graham Oliver, to send to venues, when this letter was in fact addressed to Mr Andy Palling. We were unaware of this at the time, and TCM did not have the permission of the band to do this. Mr Palling was allegedly retailing items with Saxon images on them, (T Shirts and Prints) without the permission of the Saxon partnership. Mr Oliver was using his authority, on behalf of the partnership, as proprietor of the mark, to try and receive recompense for the partners....”

Although Mr Withers refers to the letter of 27 March as being “attributed” to Graham Oliver, it is not in dispute that that letter was written and sent by Mr Oliver. Although not elegantly expressed, these communications suggest that Mr Oliver, and presumably Mr Dawson, were exercising the rights given by registration for their own benefit.

At the centre of the dispute between the parties is the extent to which, if at all, each is entitled to continue to performed under the name SAXON and to what extent, if at all, each is entitled to the exclusive rights given by registration of a trademark. The proprietors’ position in relation to this issue is put forward in Mr Withers’ witness statement:

“6.

As there was no agreement to the contrary, the original band were a partnership, and as such each member of the partnership, under English partnership law, is entitled to an equal share of the assets, and name of said partnership, unless an agreement is made to the contrary on leaving the partnership. No such agreement was made with any leaving member of the original partnership, and as such each member of the original partnership is entitled to use of the name “Saxon”, an asset of the original partnership. Graham Oliver has also been carrying on with the Saxon name since leaving the band, and has released one album, namely Re://Landed”

7.

As stated earlier, the mark was registered on behalf of the original partnership, and therefore there is no problem with other members using the mark (providing they differentiate between versions). That is why no legal action has been taken against any other member of the original partnership....

14.

As stated, no contract was evident for the leaving members of the band, so with respect to English partnership law, all departing members of the partnership have an equal right to the assets of the partnership, which include the name....”

Mr Withers is not a lawyer and it is not the normal function of evidence to advance legal arguments, but these passages appear to encapsulate the way the case was argued by Mr Withers, who appeared on behalf of the proprietors, in the Trade Mark Registry. In substance, this legal analysis appears to have been accepted by Mr Foley.

“49.

The position, therefore, is regardless of whether SAXON were a group of sole traders operating under a common name, or a partnership at will, the rights in the name SAXON and the goodwill accrued, would be owned by each individual member of the group, in the case of the founder-members, from the time that the name was first used. As members of the group departed and were replaced, each new member would accrue rights in the name, but only from the date that they joined. The departing member would retain their rights, that is, unless through action or inaction they somehow severed themselves from the right.

In my view, Mr Foley’s views as to ownership of the name SAXON and the goodwill associated with it are not correct. There is no dispute that the group was a partnership at will in the 1980’s. The name and goodwill were assets of the partnership. All the partners have or had an interest in those and all other assets of the partnership, but that does not mean that they owned the assets themselves. Absent a special provision in the partnership agreement, the partners had an interest in the realised value of the partnership assets. On dissolution of the original partnership, which is what happened when Mr Dawson departed in 1985, he and all the other partners were entitled to ask for the partnership assets to be realised and divided between them in accordance with their respective partnership shares. But none of them “owned” the partnership assets. In particular, none of them owned the name SAXON or the goodwill built up under it. The position would be very different if all the members of the original group had been performing together, not as partners, but as independent traders. In such a case, each may well have acquired a discreet interest in the name and reputation which he could use against third parties but not against the other owners. An example of this is Dent v Turpin(1861)2 J&H 139. Similarly, when Mr Oliver left in 1995, the then partnership dissolved. He had an interest in the realisation of that partnership’s assets, but he did not own in whole or in part the partnership name and goodwill.

On this analysis, Mr Foley was wrong to conclude, as he did in paragraph 49 of the decision, that it made no difference whether the musicians were performing as sole traders or as a partnership because in either case the name and accrued goodwill “would be owned by each individual member of the group”.

Mr Saunders argues that Mr Foley was right. He relies for this on the following passage in “The Law of Passing Off” by Wadlow in a passage bearing the rubric “Severance of Goodwill”:

“The common law accommodated transactions which resulted in the goodwill of a business being split. It was even impossible for the goodwill to be divided between the new owners to the extent that each of them was entitled to use the old name, in the same field of business, in the same place and at the same time. Dent v Turpin and Southern v Reynolds are examples of plaintiffs being successful in passing-off actions, although in each case the goodwill of the founder of the business and being divided after his death. An extreme illustration is provided by Burchell v Wilde. The Court of Appeal held that on the expiry of a partnership, in the absence of agreement to the contrary, each partner was entitled to enjoy his severed share of the goodwill previously held in common. Each, therefore, was entitled to carry on business in his own right under the old firm name, although the Court expressed the hope that the defendant would voluntarily distinguish himself. The Court undoubtedly understood this as sharing the goodwill fairly, rather than destroying it altogether.” (Emphasis added)

Mr Saunders relied in particular upon the underlined passage and Burchell v Wilde [1900] 1 Ch 551.

If, in the above-quoted passage, the author was suggesting that the Court of Appeal had laid down a rule of general application, in my view he is wrong. Burchell was a case concerning the dissolution of a solicitors’ practice. The decision of the court is encapsulated in the following passage from the judgment of Lindley MR:

“Unfortunately differences arose between the partners which led to a memorandum of dissolution being signed on September 15, 1899. The heads of that memorandum were of a very sketchy character, but there was a clause to the effect that all disputes should be referred to an arbitrator, under which the arbitrator has made an award upon some points, and, taking the memorandum and the award together, it is pretty plain what the arrangement was. Nothing was said either in the memorandum or in the award about the continued use of the firm name. Nor was anything said in terms about the goodwill of the business. But the agreement, as expounded by the award, amounts to this - that the clients and their documents were to be divided, some of them going to the Burchells and some to W.G. Wilde. There were also provisions for the books of the firm being handed over to a Mr Gardiner, with liberty to either of the partners to inspect them. Some of the older books were to be left with the Burchells, they being under an obligation to give extracts to Wilde if he should want them. What does that arrangement mean? It involves this - that the goodwill of the business was not to be sold for the benefit of the partners. The goodwill was to be divided between them in so far as it was incident to the possession of the clients’ papers. That is a most important factor. It was left entirely undecided what was to be done about the use of the name of the firm. But if you come to the conclusion (about which there can be no doubt) that the goodwill apart from the benefit of the firm name, as to which nothing is said, was not to be sold, but was to be divided between the partners, what is the result? It appears to me to follow that each partner could use the name of the old firm. They had become tenants in common of that assets, and each partner was entitled to enjoy that assets, subject only to a limitation, which I will mention presently....”

It seems tolerably clear that, absent the special circumstances in that case, the goodwill and name of the partnership would have been an asset of the partnership which, on dissolution, would have had to have been sold so that its value could be realised for distribution among the former partners. None would have owned the goodwill or name. What prevented that from happening in Burchell was the existence of the award which had the effect of creating an agreement between the partners to the effect that they would not sell the goodwill and distribute the proceeds on dissolution but would share it as tenants in common. Once that term existed, it followed that the name of the firm under which the goodwill had been generated had to be owned by the former partners as tenants in common also. This case does not provide support for the wider proposition advanced by Mr Saunders.

Absent special facts such as existed in Burchell, the rights and obligations which arise when a group of musicians, performing in a band as a partnership, split up can be explained as follows. It is convenient to start by considering the position when two, entirely unrelated bands perform under the same name. The first performs from, say, 1990 to 1995 and the second performs from 2000 onwards. Each will generate its own goodwill in the name under which it performs. If, at the time that the second band starts to perform, the reputation and goodwill of the first band still exists and has not evaporated with the passage of time (see Ad-Lib Club v Granville [1972] RPC 673) or been abandoned (see Star Industrial Co v Yap Kwee Kor [1976] FSR 256) it is likely to be able to sue in passing off to prevent the second group from performing under the same name (see Sutherland v V2 Music [2002] EWHC 14 (Ch), [2002] EMLR 28). On the other hand, if the goodwill has disappeared or been abandoned or if the first band acquiesces in the second band’s activities, the latter band will be able to continue to perform without interference. Furthermore, whatever the relationship between the first and second bands, the latter will acquire separate rights in the goodwill it generates which can be used against third parties (see Dent v Turpin and Parker & Son (Reading) Ltd v Parker [1965] RPC 323). If the first band is a partnership, the goodwill and rights in the name are owned by the partnership, not the individual members, and if the second band were to be sued, such proceedings would have to be brought by or on behalf of the partnership.

The position is no different if the two bands contain common members. If, as here, they are partnerships at will which are dissolved when one or more partners leave, they are two separate legal entities. This is not affected by the fact that some, even a majority, of the partners in the first band become members of the second. A properly advised band could avoid the problem that this might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill. This is now commonplace in the partnership deed for solicitors’ practices.

How do these principles apply here? Consider the position of Mr Dawson first. By the time of the application to register, his claims to any share or interest in the original partnership assets was 12 years old. During that period he had never performed in a band which used the name SAXON alone. When Mr Oliver made a claim for an account in his High Court proceedings, Mr Dawson did not. Indeed, it is not suggested that Mr Dawson had claimed to own any interest in the use of SAXON alone at any time prior to the application to register the mark. As far as his own connection with the name is concerned, Mr Foley said:

“50.

Having established that Mr Byford, Mr Oliver and Mr Dawson had rights originating from [before the original group was dissolved], what is the position at the relevant date. Mr Dawson departed from the group in 1985 and did not have any active involvement with the name SAXON for over a decade. That he was a founder-member of the original group would be a fact known to long term fans, and may have become known to those who supported the group even after his departure, but so would the fact that he had left the group have been common knowledge. Re-issues and back-catalogue issues of recordings on which Mr Dawson performed may have contributed to the maintenance of some of his goodwill, but the evidence relating to such events is scant. I would therefore conclude that by the time he became involved with Mr Oliver, a decade later, Mr Dawson’s rights to the goodwill in the name SAXON are likely to have diminished, but not dissipated.”

This starts from the premise that Mr Dawson owned some rights generated by the first band in the name SAXON from the 1980’s. For reasons already given, I do not accept that. Furthermore, Mr Norris for Mr Byford argues that Mr Foley was overstating the position when he referred to the evidence as “scant”. In truth there was no evidence showing that any significant part of the public associated Mr Dawson with the name SAXON alone. I agree. Not only did Mr Dawson not own the name or the goodwill, but on the evidence, he had abandoned any interest in the original partnership’s trading style SAXON alone and the goodwill generated in it. But, as I have said, even had he not abandoned his interest, he is not an owner of the name and goodwill generated by the first band. Furthermore, whatever may have been the position in the 1980’s, the recent reputation and goodwill in the name SAXON has been built up by the other partnerships which had performed under that name up to the present time. Mr Dawson had no interest in that.

As far as Mr Oliver is concerned, Mr Foley summarised the evidence relating to his continued interest in SAXON as follows:

“51.

The position with Mr Oliver is somewhat different. He was involved with SAXON until 1995, and approaching only three years prior to 6 November 1997, the relevant date in these proceedings. Between 1995 and November 1997, Mr Oliver performed with a group by the name of “Son of a Bitch”, but promoting itself as, or by reference to SAXON, including Oliver/Dawson SAXON, SAXON-Son of a Bitch tour, SAXON-the early years, and even attempted to do so under the name SAXON solus, but was prevented by threat of legal action. As I have previously mentioned, the applicant refers to the style of script used by Mr Oliver’s group, namely a form of Gothic font with a stylised letter S which is identical to that used by the “original” group, a fact that cannot have escaped the public and heightened the association, which was no doubt the intention.

52.

On these facts I do not consider that Mr Oliver could be considered to have severed his contact with his rights in the name and goodwill of the “original” SAXON, and accordingly, at the time that he made the application, he had every right to claim to be, if not “the”, then certainly “a” proprietor of the mark. The position would not be any different if considered at an earlier date. That Mr Oliver’s group sought to differentiate themselves from the “original” SAXON appears to have been on advice whilst matters were being determined. I do not consider that in doing so he relinquished his rights, nor that I can infer from this that he was acknowledging the weakness of his claim. The fact that Mr Byford’s group may be considered as the “original” band or have been using the name on its own for a longer period of time does not take away this right. Likewise there was no reason why other members of the group could not have made an application to register the name, but if challenged their right to do so would have subject (sic) to the same scrutiny as Mr Oliver’s has been.”

In my view, Mr Oliver’s position is much the same as Mr Dawson’s, save that it is less easy to say that he abandoned his interest in SAXON alone in the three years between his departure from the group and his application to register SAXON as his trade mark. For reasons given above, Mr Foley was in error to conclude that Mr Oliver had every right to claim to be a proprietor of the mark. The only connection he had with the use of SAXON alone was through his membership of the original partnership. Furthermore, on the proprietors’ evidence, there is no suggestion that Mr Oliver has, since his departure from the band, used or asserted a right to be entitled to use SAXON alone.

The above facts must now be applied to the two subsections in issue. As far as s. 5(4) of the Act is concerned, the question to be asked is whether any normal use by the proprietors or either of them of the mark as registered for any of the goods or services in respect of which it is registered would be liable to be prevented by passing off proceedings brought by any other person. Since the mark as registered is SAXON, normal use would include use of that word alone by the proprietors in relation to records and live performances. Mr Foley answered this question as follows:

“53.

The provisions of Section 5(4)(a) allow for a proprietor of an earlier right in relation to the trade mark to prevent the use of a later trade mark. The problem for the applicant is that he has a right to the goodwill in the name SAXON, but from the same date as the registered proprietor, and consequently, cannot succeed in a claim for passing off under Section 5(4)(a). The ground is dismissed accordingly.”

Mr Foley appears to have construed the section as if it is only concerned with cases where the use of the mark by the proprietor starts after use of the same or a similar mark by someone else. I do not think that this is what the section says. For the prohibition to bite, all that needs to be shown is that, at the time of the application to register, the normal use of the mark by the proprietor would be liable to be prevented by passing off proceedings brought by someone else. It may well be that in most cases this will only arise when the other party had commenced using his mark before the proprietor, but it is not inevitably so and the section does not require it to be so. The fact that the convenient title “proprietor of an earlier mark” is used to designate the other party does not limit the scope of the section. Consider, for example, a case in which one proprietor uses a mark on a retail clothing business in Manchester and the other uses it on a similar business in Plymouth. They commence trade at the same time. Their trades do not compete because of the geographical separation. Assume the Manchester trader registers the mark. Normal use of it would include use in Plymouth. That would be liable to give rise to a cause of action in passing off (see Levey (A.A.) v Henderson-Kenton (Holdings) [1974] RPC 617 and Evans v Eradicure [1972] RPC 808). For that reason the registration by the Manchester trader would fall foul of s 5(4)(a) even though the Plymouth trader commenced use of the mark at the same time. For the same reason the Plymouth trader could not register the mark.

Whether s 5(4) applies in this case can be answered by considering whether the use of the word SAXON alone by Mr Dawson as a trade mark for use on a heavy metal band or on records relating to such a band would be liable to be prevented by passing off proceedings. In my view the answer is in the affirmative. First, the current band operating under that name could bring proceedings. Recent goodwill is its alone. Were Mr Dawson to perform as SAXON now, he could be sued for passing off by Mr Byford’s band in respect of its most recent use of that name and the goodwill attached to it. Mr Dawson’s historical connection with the original band in the 1980’s would be no defence. Second, if and to the extent that there is any residual goodwill in the original band, as Mr Dawson and Mr Oliver allege, that is owned by the partnership, not the individual members of it. Any administrator appointed by the former partnership members could bring proceedings against use of the name by Mr Dawson. Whether such an administrator could bring passing off proceedings against Mr Byford’s band is irrelevant and does not need to be determined in these proceedings. What counts is whether Mr Dawson could be sued for passing off if he used SAXON alone, nor whether Mr Byford could be sued. The same points can be made in respect of Mr Oliver.

The proprietors also fall foul of s. 3(6). As Mr Foley said in his decision, the leading guidance on the application of this section is Growmax Plasticulture v Don & Low Nonwovens Ltd [1999] RPC 367 in Lindsay J said:

“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context; how far a dealing must so fall-short in order to amount to bad faith is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material surrounding circumstances.”

Mr Foley dealt with this in two parts. First he addressed the facts:

“57.

Mr Withers repeatedly says that the trade mark was registered for the benefit of all the “original” group, a statement that could be taken to be at odds with some of the evidence. That evidence may well be disputed, but it has not been established as being false. …;”

In my view that is too generous to the proprietors. They applied for registration in their own names. At no stage prior to these proceedings did they assert that they were applying for and on behalf of a partnership. What is clear from the evidence is that the application to register the mark was made without the knowledge or consent of at least one member of the original partnership, namely Mr Byford. The first he knew of it was after registration when Mr Oliver threatened to use it against him and retailers of his band’s goods. There is no material to support the suggestion that Mr Oliver or Mr Dawson had sought or obtained authority to apply for registration on behalf of the old partnership. All the documents demonstrate that it was applied for for and behalf of those two gentlemen themselves. Mr Oliver’s letter of 27 March asserts that permission to use SAXON must be obtained from him and Mr Dawson, not from the partnership. It also asserts that they, not the partnership, are entitled to compensation for trade mark infringement.

Mr Foley then says as follows:

“57.

… But even if Mr Oliver and Mr Dawson had not registered the mark for the good of all, could the act of doing so be said to be an act of bad faith?

58.

On the facts before me, it is my view that Mr Oliver, and arguably, Mr Dawson, had as much right to claim to be the owners of the mark in suit, albeit not exclusively, to seek to register the mark in their own names and to prevent use of the mark by third parties. However, what is good for one is good for the other. I consider that Mr Byford also had the right to regard the trade mark as his own, and to seek register (sic) it in his own name, should he so wish. The problem now is that Mr Oliver has got there first. Taking all factors into account I do not consider that in making the application to register the trade mark Mr Oliver acted in bad faith, and the ground under Section 3(6) also fails.”

As indicated above, I disagree with Mr Foley’s conclusion that Mr Oliver and Mr Dawson had a right to claim to be owners of the mark. Furthermore, inherent in the statement that Mr Oliver “got there first”, is the recognition that ownership of the mark gave the proprietors the right to interfere with the use of the same mark by others in relation to the same goods and services. That Mr Oliver and Mr Dawson could use it to interfere, not just with other former partners in the original band, but also with the current band. As a result of the letter of March 2001 and email referred to above, it can be seen that the ability to interfere is not a hypothetical possibility.

As Lindsay J said, each case must be decided on its own facts. Here the proprietors have obtained registration of SAXON simpliciter even though they have no existing title to it and have done so for the purpose of interfering with the rights of others who do and have consistently used the mark. In my view this is bad faith within the meaning of the section.

For these reasons I will allow the appeal.