TAK­ING THE LEAD

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW -

Camp­bell sought to block the in­junc­tion but the court found in favour of the re­main­ing mem­bers, stat­ing that they have a “real­is­ti­cally ar­guable ba­sis” for their com­plaints. A date for the full trial is ex­pected to be an­nounced soon.

The name UB40 is not reg­is­tered as a trade­mark al­though the on­line records of the Euro­pean In­tel­lec­tual Prop­erty Of­fice show that Camp­bell ap­plied to reg­is­ter it as a trade­mark in his name in 2013. The ap­pli­ca­tion was with­drawn fol­low­ing op­po­si­tion from the re­main­ing mem­bers of the orig­i­nal band and it ap­pears that no at­tempts had been made to reg­is­ter UB40 as a trade­mark prior to this.

The is­sue gives rise to an in­ter­est­ing le­gal de­bate. There are no set rules with re­gard to who owns a band name but the is­sue usu­ally falls under trade­mark law. It is not un­com­mon for band names to be reg­is­tered as trade­marks by the band’s record la­bel or pro­duc­ers but in the ab­sence of a trade­mark reg­is­tra­tion, who owns the rights to a band name?

From a le­gal per­spec­tive, it must be borne in mind that the func­tion of a trade­mark is to serve as a badge of ori­gin — to dis­tin­guish the goods or ser­vices of one party from the same or sim­i­lar goods or ser­vices of an­other party. Trade­marks are pro­tectable in re­la­tion to the goods or ser­vices in re­la­tion to which they are used or in­tended to be used.

A band name would nor­mally be reg­is­tered in re­spect of en­ter­tain­ment and re­lated ser­vices, in­clud­ing live per­for­mances in class 41 of the In­ter­na­tional Clas­si­fi­ca­tion of Goods and Ser­vices, which is fol­lowed by most ju­ris­dic­tions. Reg­is­tra­tion could also be ob­tained in goods classes cov­er­ing mer­chan­dise fea­tur­ing the band’s name, such as dig­i­tal and other records and CDs as well as cloth­ing and other prod­ucts.

Next to the ac­tual songs and al­bums pro­duced by a band, which would be pro­tected under copy­right law, the band’s name is ar­guably its most valu­able as­set and can be com­mer­cially ex­ploited for sub­stan­tial prof­its re­sult­ing from record sales, per­for­mances and mer­chan­dis­ing.

Turn­ing to the ques­tion of who has the right to a band’s name in the ab­sence of a trade­mark reg­is­tra­tion or spe­cific agree­ment, as men­tioned there are no set rules and the is­sue must there­fore be deter­mined with re­gard to trade­mark law prin­ci­ples.

From the per­spec­tive of South

Pic­ture: AN­TO­NIO MUCHAVE

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