Rubettes’ Trademark Filed "with the Sole Intention to Ruin the Applicant's Existence"

Trademark cases can become deeply personal, and a recent Cancellation action before the European Union Intellectual Property Office (EUIPO) regarding the ‘Rubettes’ trademark is a striking example of this.

The Rubettes are an English pop/glam rock band that achieved significant success with “Sugar Baby Love.”  However, their history since then has been marked by conflicts within the band and legal battles.

In 1999, Bill Hurd, one of the original founding members, established a separate band using the name “The Rubettes.” This led to litigation in the United Kingdom between him and Alan Williams (lead singer), which was settled in 2002. It was agreed that from 2002 onwards, Alan Williams would perform as “The Rubettes featuring Alan Williams,” while Bill Hurd would perform as “The Rubettes featuring Bill Hurd.” It was reported that Hurd actually went bankrupt as a result of this court case but has continued to perform as “The Rubettes featuring Bill Hurd” to this day. Furthermore, there was even a third act named “The Rubettes feat. John, Mick & Steve.”

Now, returning to the current cancellation case before the EUIPO between Alan Williams and guitarist Mick Clarke—Alan Williams filed the cancellation action against the ‘Rubettes’ trademark filed by Mick Clarke. It was in this cancellation matter that Alan Williams alleged that Mick Clarke filed this trademark with the sole intention “to ruin his existence.”

Alan Williams claimed that Clarke was merely an employed musician (paid per show) over the years and had absolutely no right to this name. Alan Williams also stated that he uses the mark ‘The Rubettes feat. Alan Williams,’ which is similar to the contested sign ‘Rubettes.’

Clarke contends that he applied for a trademark in the UK and subsequently filed for a European Trademark because the remaining members of the band, including himself, needed to continue their activities to earn a living without Alan Williams, who had relocated to Australia.

In an overall assessment of all the facts and evidence, the Cancellation Division considers it reasonable to assume that when filing the contested European Trademark, Mick Clarke aimed to usurp the applicant's rights in the mark ‘Rubettes.’

The Cancellation Division finds it puzzling why Clarke decided to register the marks ‘The Rubettes’ and ‘Rubettes’ instead of ‘The Rubettes Featuring John, Mick, and Steve’ or “The Rubettes featuring Mick Clarke.” That would have been a more logical approach.

After filing the European trademark, Clarke even started pressuring Alan Williams and their agents to remove "Rubettes" references from their materials. According to the European Trademark Office, this raises concerns about his motives and potential bad faith intentions.

Considering all of the above, the Cancellation Division concludes that the evidence and arguments submitted by the applicant are sufficient to prove that the EUTM proprietor acted in bad faith by registering the trademark in question. Case closed? Probably not.

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.