12/09/2007

Frankie says don’t register my trademark!

Matthew Howarth, intellectual property solicitor

Those of you old enough to remember the glory days of 1980s pop and fashion will no doubt recall the iconic band Frankie Goes to Hollywood. Today, the Liverpool group are in the spotlight once again – but this time it is over a dispute of ownership of the band’s name rather than having a record banned by Radio One.

Frankie Goes to Hollywood was originally fronted by lead singer Holly Johnson. Johnson left the band in 1987 and he claimed that he had been the inspiration behind the band name and that he owned the intellectual property rights in that name. He further argued that he had agreed with the other original band members that they could use the name, but if any member of the original band left then the right to use the name would cease.

After the band split up in 1987 there was no further use of the name Frankie Goes to Hollywood. However, there was a move for the 1980s band to reform in 2003 by appearing on a television programme called Bands Reunited. This resulted in the original members of the band (minus Holly Johnson) seeking to use the original band name.

Holly Johnson objected to the use of the band name claiming that he had the exclusive rights to the name and he sought to register Frankie Goes to Hollywood as a UK trade mark. The other band members opposed this application claiming that the right to use the name was one that all the members of the band should be entitled to use and that Johnson’s application had been made in bad faith.

After a detailed hearing the Intellectual Property Office (which has responsibility for registration of UK trade marks) ruled in favour of the band members. It found that the name Frankie Goes to Hollywood was not owned exclusively by Holly Johnson and that he would not be permitted to register it as a trade mark in his own name. The use of the name had generated goodwill and recognition for all of the original band members and as such could not become the sole monopoly of one of them.

Interestingly, the Frankie Goes to Hollywood case in fact serves to highlight the importance and value of trade marks to businesses of all sizes in all sectors throughout the Yorkshire region. Trade marks are a valuable asset that can generate strong market recognition and income through merchandising and licensing arrangements.

Once obtained, they can provide a valuable monopoly right that not only can be used to differentiate your own brand, but also can be a powerful weapon to prevent others from copying or mimicking your chosen brand name.

If applying for a registered trade mark it is important to establish who is going to make the application and who the registered owner will be. Often businesses will make the application in the name of one of its employees rather than the business.

This can create difficulties if that employee leaves the organisation and there is a dispute about who is the legal owner of the mark – the applicant or his employer business. To avoid these uncertainties it is important to be clear about who the applicant is when seeking the registration, of a mark, an individual or the business.

If original members of that business venture leave, or the business were to fail, the disposition and future use of the rights (which can often survive the demise of the business for some time) can be the subject of a bitter dispute. A clear ownership strategy is vital to prevent arguments after the event whether you were once on Top of the Pops or not.

If you would like further information please contact Matthew Howarth at matthew.howarth@gordonsllp.com