Posted on April 24, 2025
26 April 2025 is World Intellectual Property Day, and this year the theme is IP and music.
IP rights that are automatically acquired like copyright protection are clearly important in the music industry and can provided valuable legal rights over melodies, lyrics, sound recordings and the like. As patent attorneys and trademark attorneys our work on IP rights is typically focussed on registered rights such as patents, trade marks and registered designs.
In our third and final article, we discuss the trade mark work undertaken to protect the brand of two clients: Jerry Dammers and The Specials, and Future Publishing.
Jerry Dammers and The Specials
Case T-336/15 concerned the trade mark rights in the band name "The Specials," registered by Jerry Dammers, the keyboardist and founder of the UK ska band, as a Community trade mark (now EUTM) in 2005 for a wide variety of goods and services in Classes 9, 16, 25 and 41. The other party filed for revocation of the trade mark in 2012, citing a lack of genuine use. To assist the client in retaining his trade mark, Abel + Imray provided evidence of use, including a 1979 recording contract with the record company and records of royalty payments received by Jerry over the years from sales of the recorded music.
The EUIPO's Cancellation Division revoked the trade mark for most goods and services but maintained "compact discs (audio-video)" and "electronic publications (downloadable)." On appeal, the First Board of Appeal upheld the revocation for "electronic publications" but confirmed that there had been genuine use of the mark The Specials for "compact discs", relying on the record company's use of the mark The Specials on CDs. The other party further appealed to the General Court, arguing that Jerry Dammers had assigned the right to use the mark The Specials to the record company at the time the recording contract was signed and could therefore not be said to be consenting to use of the mark by the record company. The General Court and subsequently the Court of Justice of the EU, the highest court in the EU for trade mark matters, rejected these claims, interpreting the recording contract as a licence to the record company to use the mark with Jerry's consent to that continuing use. The royalties paid by the record company to Jerry were sufficient to constitute genuine use of the mark.
Key takeaways from the case include:
- Case T-336/15 overview: Jerry Dammers registered the trade mark "The Specials" as a Community trademark in 2005, which faced revocation claims in 2012 for lack of genuine use.
- Evidence of use: Abel + Imray provided evidence, including a 1979 recording contract and royalty payments paid pursuant to that recording contract, which led to the EUIPO confirming genuine use for "compact discs" despite revocation for other goods.
- Key takeaways: The case established that third-party use by a record company can count as genuine use by the artists if consent to that use is implied and substantiated by continuing payments by the record company to the artist.
- Legal implications for musicians: The courts ruled that musicians could still assert their trade mark rights if the record company used the band name with their consent, benefiting those musicians.
Future Publishing
Future Publishing publish magazines in a wide range of subject areas, including the field of music. In 2009, we were asked to help obtain trade mark protection for their Classic Rock magazine, dedicated to rock music, which dated back to the 1990s. Unsurprisingly, their UK Trade Mark Application for the mark CLASSIC ROCK faced an official objection on the grounds that it was not sufficiently distinctive to function as a trade mark for magazines and associated goods and services. Abel + Imray assisted Future Publishing in preparing and filing a significant amount of evidence demonstrating that the mark had acquired distinctiveness through use. Despite the inherently descriptive nature of the mark in the context, the evidence filed persuaded the Examiner that distinctiveness had been acquired, which resulted in the mark being approved for registration.
There are of course a wide range of valuable brands associated with the music industry, from the names of bands and musicians to the names of publications who report on them. Things can get particularly complicated in such creative industries, where ownership of trade marks is not necessarily front of mind for all the parties involved. Nevertheless, obtaining and enforcing suitable trade mark protection can be a crucial part of commercial success, and there is usually a way to resolve even very complex legal situations, even if it might take some additional creative thinking to achieve a good outcome.
We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys.
Other articles in the series for World Intellectual Property Day 2025:
