IN THE UK OFFICE

Mary No Longer Reigns Supreme

The Supremes were one of the most successful pop groups of the 1960’s. The original line up of Florence Ballard, Diana Ross and Mary Wilson recorded a string of hit records, first as The Supremes and then, once Florence Ballard left and Diana Ross became more prominent as the lead singer, as Diana Ross and The Supremes.

Diana Ross left the group in 1970 and with her departure the group went into relative decline. However, it continued to perform and record songs until 1977, at which point the group disbanded. During that seven year period, there were a number of changes of personnel, including the introduction of the singers Lynda Laurence and Scherrie Payne. Throughout the group’s sixteen year existence, Mary Wilson was the one constant factor. Having joined the group at the outset, she remained with it until it ceased to exist in 1977.

In 1985, a new record company (Superstar International) approached Scherrie Payne with the proposal that she should reform The Supremes. Ms Payne, in turn, contacted two former members of the original group, Lynda Laurence and Jean Terrell and the reformed group began performing and recording under The Supremes name from 1986 onwards.

This turn of events did not please the former ever present member of the group, Mary Wilson. Since 1977, Ms Wilson had continued to pursue a solo singing career, on occasion drawing on her previous involvement with the group by referring to herself as The Supremes’ Mary Wilson or the like.

Although she felt aggrieved about what she saw as the misappropriation of The Supremes name by others, Ms Wilson did not take any action against the new group, at least in the UK, until April 1995 when a company she controlled (Mary Wilson Enterprises, Inc) filed a UK trade mark application for The Supremes claiming goods and services in Classes 9, 16, 25 and 41. This application was opposed by two members of the reformed group, Ms Laurence and Ms Payne. The grounds of opposition were that

The mark should not be registered because its use in the UK would be liable to be prevented by the law of passing off (Section 5(4)(a)), and

• The application was filed in bad faith because the mark did not belong to the applicant (Section 3(6)).

Dealing with the Section 5(4)(a) objection first, the Hearing Officer ruled as follows:

• The date at which the opponent’s claim had to be considered was the application date. However, if the mark applied for is also in use at that date then that use also needs to be taken into account in order to determine whether, for instance, an antecedent or concurrent right exists.

• The Supremes ceased to exist as an active group between 1977 and 1985 and Mary Wilson made no attempt to capitalise on any existing goodwill in the name. On the evidence, since she left the group, Ms Wilson had not been performing as The Supremes.

• It is not legitimate for the defendant (in a passing off action)…to commence an abandoned business under a name or mark which has meanwhile become distinctive of the plaintiff.

• Any goodwill in the name The Supremes generated in the UK since 1985 had accrued to the opponents rather than the applicant (or anybody else). Therefore, by 1995, the name had come to be associated with the opponents and the goodwill of the underlying business accrued to them.

• Over the decade leading up to the application date the UK public had come to associate the name The Supremes with the opponents and would therefore be misled if the applicant now entered the field under that name. It followed that use of the mark applied for would constitute a misrepresentation by the applicant. The fields of activity of the applicant and the opponent were essentially identical. It could therefore be reasonably inferred that damage would occur to the opponents, particularly as a result of the potential diversion of trade.

• The applicant could make no valid claim to concurrent use of The Supremes in the UK. Given that the opponent had established their ownership of the goodwill in the name The Supremes as well as the likelihood of a misrepresentation by the applicant and resultant damage, the Section 5(4)(a) ground of opposition succeeded.

Turning to the Section 3(6) complaint, the Hearing Officer again found in favour of the opponent and made the following comments:

• Finding that an opponent has a superior right for the purposes of Section 5(4)(a) does not in itself mean that the application was made in bad faith.

• The test for bad faith is an objective one. A finding of bad faith may be fully justified even in a case where the applicant sees nothing wrong in his own behaviour.

• It was reasonable to infer that the application in suit was filed in April 1995 in the knowledge that the opponents had been performing under the name The Supremes for almost ten years. In that time, neither the applicant nor anyone else had taken any action against the new group to prevent their use of the name.

• The filing of the UK application by Enterprises fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area being examined.

 

Comment

The above case provides a salutary lesson in the dangers of delay and acquiescence in the trade mark area. Although the decision probably should not prevent Ms Wilson from referring to herself as Mary Wilson formerly of The Supremes, it does mean the painful loss of a right that no doubt Ms Wilson still feels belongs, at least in part, to her.

It would be interesting to see the results of a UK survey of the meaning of the phrase The Supremes in the popular music market. The writer would be extremely surprised if the majority of those asked did not associate the term with the group containing Diana Ross and, to a lesser extent, also featuring Mary Wilson. If that is the case, one wonders if an appeal against this decision would succeed if Mary Wilson Enterprises produced convincing survey evidence illustrating an overwhelming connection between The Supremes and the earlier group which contained Mary Wilson.