Ukulele if you want to…
The Intellectual Property & Enterprise Court last week refused to grant an interim injunction to the Ukulele Orchestra of Great Britain (UOGB) against rival black-tie-clad strummers the United Kingdom Ukulele Orchestra (UKUO) on the eve of the latter's imminent tour of the UK.
UOGB is based in this country, has played and recorded here for many years and has registered a Community Trade Mark (EU009477341) for its name in a number of classes of goods and services. UKUO plays with a similar format and repertoire, and is made up predominantly of British musicians, but is based in Germany and has so far played almost entirely to continental audiences for a number of years.
However, with UKUO poised to tour the UK starting in October, UOGB launched trade mark infringement proceedings citing the likelihood of confusion between the two names, and sought an interim injunction to prevent UKUO's UK tour from going ahead. UKUO have disputed the claim.
In a demonstration of some of the factors that the Court will take into account when considering whether or not to grant injunctive relief, Judge Hacon held that UOGB's application had come far too late for interim injunctive relief to be appropriate. He noted that UOGB would have been aware of UKUO's existence and (presumably) the potential for them to play in the United Kingdom for many years, and noted that the application had been made only when the planned tour was due to begin.
In addition, he weighed arguments around the balance of convenience, hearing from UKUO's lawyers that an injunction against the tour, for which many tickets had already been sold and detailed arrangements made, would have cost their clients many tens of thousands of pounds.
So UKUO's tour will go ahead as planned, beginning in Lincoln in October, with the disputed Trade Mark Infringement claim continuing in the background, with an expectation that if it reaches trial, that will be late this year or early in 2015.
Clients with brands they wish to protect are well advised to take note of this and cases like it. Interim injunctive relief can be a powerful way to protect the status quo while a trade mark battle is fought through to trial, or while settlement negotiations take place between the parties to resolve the matter on commercial terms, but it is never granted lightly by the Court and it is important for a claimant to move quickly to ascertain the strength of its case and the appropriateness of an application for an interim injunction before proceeding along that route.
As a general rule of thumb, the further along the road the would-be infringer has got in doing the thing that you wish to prevent, and the more money they have at stake if they have to stop, the more difficult it will be for you to secure interim relief in this way.
In this case, fans of the sound of massed ukuleles playing in concert have much to look forward to in the months ahead, whilst intellectual property lawyers will have to wait a little longer to discover the outcome of the legal dispute.
This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.