Music industryDo you remember the song “September” ? Do you also remember the band behind the song? Yes… it is the famous US band EARTH WIND & FIRE. Why I am asking this? Thanks to the IP team of the Austrian law firm Brauneis Klauser Prändl (bkp) led by Martin Reinisch, this band just achieved a retroactive cancellation of the Austrian trademark “THE EARTH WIND & FIRE EXPERIENCE featuring the Al McKay All Stars”. Why is this so significant? The effect of the successful trademark cancellation goes well beyond Austria, as the deleted Austrian trademark served as basis trademark for an identical international mark with protection in more than 10 countries. Are you interested? Let’s start at the beginning…

Dispute over many years

The trademark at issue had been registered in 2003 through the Austrian agency of Al McKay. Al McKay was a guitarist of EARTH WIND & FIRE and also composed some of their songs, but left the band in the 1980s. Maurice White, the band leader and owner of the rights in the famous band name, had already applied for the cancellation of the trademark in 2008. The first instance ruling in favour of Maurice White by the Austrian Patent Office was only made in 2013. This decision has recently been confirmed by the Appellate Court of Vienna and has since then become res judicata.

Maurice White’s claim

The basic problem for Maurice White was that – although there was trademark protection in the US and other non-European countries – he had no earlier trademark registered in Austria or the European Union. Therefore the claim had to be based on the band name as an unregistered sign and in bad faith: Since the early 1970s, the band had significant successes (also) in Austria. The band was inducted into the Rock and Roll Hall of Fame, the vocal Group Hall of Fame, and received a star on the Hollywood Walk of Fame. So it was claimed that “EARTH WIND & FIRE” was already protected as a sign by its use. Through such qualified prior use, the sign became a notoriously known trademark. Also, the trademark EARTH WIND & FIRE had already been registered by Maurice White in the US and in other countries. It was also claimed that it stands to reason that the Opponent is trying to benefit from the good reputation of the trademark. Despite being a former band member, neither he nor his agency have a right to use the band name for themselves. Further, bkp claimed on behalf of Maurice White that the application of the trademark had been made in bad faith, with the intention to obstruct the sign use by Maurice White and his original band.

The ruling

The Austrian Patent Office and recently the Higher Regional Court of Vienna found that the trademark application through an agency of the former EWF band member Al McKay had been made in bad faith in 2003:

Bad faith…

Bad faith as stipulated in Article 34 Austrian Trademark Act is based on Article 3 Section 2 of the European Union Trademark Directive. It applies to circumstances at of an unjust or immoral registration of a sign. This perquisite has to be interpreted autonomously and in conformity, taking into account all circumstances of the individual case. Although bad faith was formerly merely acknowledged in jurisprudence in cases of loyalty violation and/or hindrance of using the trademark by a third person, following the most recent case-law, bad faith is also given when the intention of the applicant is to obtain a means to disturb the system built up by a competitor. It is not necessary that this intention is the sole reason for the application; it is sufficient if it is a major reason. Further, bad faith can only be assumed if the trademark holder was – at the time of the trademark application – aware that competitors are using identical or similar signs for identical or similar goods and services. Proof of bad faith has to be submitted by the applicant.

…was given

The Appellate Court mainly supported the reasoning of the Austrian Patent Office and found that the qualifications for the assumption of bad faith of the Opponent were given: The Opponent was aware that EARTH WIND & FIRE has been protected as a trademark in many jurisdictions. Furthermore the connection with the band name, as well as the international fame of EARTH WIND & FIRE, has been acknowledged by them. Even if Al McKay himself was famous (which was claimed by the agency, but not confirmed by the court), this would  not be relevant at all, because the mere fact that he used to be a band member does not entitle him – even less the agency as a third party – to use this sign with the aim to benefit from its fame. The agency’s argument that the trademark had been registered in order to protect Al McKay’s band from tribute bands, was also rejected. It can be safely assumed that with the application of the Opponent’s trademark, the Opponent had the intention to hinder the use of the earlier sign. All these facts indicate the subjective element of bad faith.

The assessment of likelihood of confusion

Although the signs at issue are not identical, the mere addition of “featuring …” does not suffice to negate likelihood of confusion especially in view of the identical goods and services. Because of the fame of Maurice White’s sign, the relevant public is not restricted to persons attending concerts or buying music. It is also the less attentive radio listener, for instance. The average consumer does not have the opportunity to compare the signs next to each other and will merely retain an imperfect image. The Opponent’s trademark is not identical but it creates likelihood of confusion. The Appellate Court further reasoned that the Opponent itself admitted this fact by stating that there is a link in the consumer’s mind between both signs which is supposed to support the marketing.

Central Attack

As the deleted trademark served as a basis trademark for an identical international trademark with protection in more than 10 countries, the case was not only relevant for Austria. “Following our ‘central attack’ against the basis trademark, the whole international registration in all designated states is being deleted, because of the retroactive effect of the cancellation in Austria”, reports Martin Reinisch happily about his client’s success.