Kool & The Gang – Still Kool

Image via Enzo Productions

Kool & The Gang had its biggest successes in the seventies and eighties (remember: Ladies Night!).

Only one founding member of Kool & the Gang, Robert “Kool”, is still alive. In 2021, however, new members of Kool & the Gang released their studio album named “Perfect Union”.

So, Kool & The Gang is still “alive and kicking”, still Kool and still actively protecting their trademarks and even acting against similar trademarks. Based on their EU trademark rights for KOOL AND THE GANG, they have been largely successful against a European trademark application for COOL GANG in the name of a Polish company named GDD Spółka z o.o. spółka komandytowa.

The EUIPO assumed there to be a likelihood of confusion (article 8 (4) of EUTMR) with most products and services covered by the EU trademark KOOL AND THE GANG. Even though this COOL GANG mark does not seem to be destined for a band or musical group, it covered products similar to those protected by Kool & The Gang (like stationery and bags).  It is good news for artists, bands and DJ’s registering their trademarks that they can act in such cases.

The opposition decision of the EUIPO did contain an element that we find somewhat disturbing. When assessing as to whether the mark KOOL AND THE GANG has enhanced level of protection based on article 8 (5) of EUTMR (Reputation), the decision states: “it cannot be inferred from the evidence that the name ‘Kool & The Gang’ has been used as a trademark.” Therefore, there is no extra bit of protection against less similar goods based on reputation. Some “Kool” news, and some not so “Kool” news for Kool & the Gang.

Side note:  we did not mix up “Kool & the Gang” and “Kool and the Gang” in  this little article. This musical group is most commonly being referred to as “Kool & the Gang” but they protected “KOOL AND THE GANG” at EU level. For the trademark geeks amongst you: Yes, using Kool & the Gang while registering KOOL AND THE GANG still very likely is: “use as registered”.

Author: Erik Stegeman

Bio: Erik Stegeman is a trademark attorney and specialist in trademark protection for bands, DJs and artists. His client portfolio includes many famous DJ’s like Charlotte de Witte, Swedish House Maffia and Tiësto. He writes a lot about music trademark infringements. And if you are lucky, he will give you hints on the latest band and DJ’s.