Battle of the Ukuleles

Posted 27/07/2015

The Ukulele Orchestra of Great Britain (UOGB) has been in the limelight recently after it took the United Kingdom Ukulele Orchestra (UKUO) to court. 

The UOGB was founded in 1985 and, as the name suggests, consists of a group of musicians playing the Ukulele.  The group has enjoyed great success with its unique performance style involving comedy, renditions of popular songs and full evening dress. They have played at venues such as Glastonbury and the Royal Albert hall and performed alongside the likes of Robbie Williams and the Kaiser Chiefs.    

In contrast (or perhaps not!), the UKUO came on the scene in 2009 and also consists of a group of musicians playing the Ukulele.  Whilst the musicians are British, the group is based in Germany and play popular songs attired in evening dress with an often comic twist.  Sound familiar?  UOGB’s founder, George Hinchliffe, certainly thought so referring to UKUO as a “copycat musical performance trading off the reputation of established groups”.       

It is perhaps not a surprise that the UOGB were unhappy with the existence of the UKUO and its confusingly similar name and performance style.  Indeed, there was ample evidence of actual confusion between the two groups with consumers mistakenly purchasing tickets for the wrong group and the press using photos of UOGB when talking about UKUO. 

Having found itself in this position, UOGB sought to protect its brand by suing UKUO for trademark infringement and passing off.  A separate claim for copyright infringement was also argued but this is outside of the scope of this article. 

Trademark infringement

UOGB owned a community trade mark (CTM) in the word mark ‘The Ukulele Orchestra of Great Britain’ which it argued UKUO had infringed on the grounds of confusion and unfair advantage. 

As a Community Trade Mark is a unitary right covering the whole of the EU as a single market, a trade mark which lacks distinctive character in part of the EU will be refused registration as a CTM.  Whilst OUGB could prove distinctiveness in the UK, it could not prove distinctiveness in every member state.  The claim therefore fell before it had even passed the starting line with the court finding that the CTM had been invalidly registered.

The court did however go so far as to say that if the CTM had been validly registered, the UKUO would have infringed it.  Given this finding it is interesting to note that UOGB would have been able to successfully sue UKUO had it held a UK trade mark for ‘The Ukulele Orchestra of Great Britain’ rather than a CTM.

The passing off claim

Having failed on the trademark infringement claim, OUGB had to rely on the often tricky to prove common law concept of passing off.  To establish passing off OUGB had to show it had goodwill in its brand (i.e. its performance style and name), UKUO had (whether intentionally or not) falsely represented its services as that of OUGB’s, there was a connection between the services of both and that there was a likelihood of actual deception or confusion between the two groups by the public.  OUGB then had to show that its goodwill had been damaged by UKUO either by a loss of trade or dilution of goodwill. 

Having reviewed the evidence the court was satisfied that OUGB had goodwill in its business in England and Wales and that the use of the words ‘United Kingdom Ukulele Orchestra’ misrepresented to a substantial portion of the public that the two groups were the same or where otherwise connected.  The OUGB had suffered damage to its goodwill by the erroneous association with UKUO and so the claim for passing off succeeded. 

This case is an interesting illustration of the importance of brand protection and a reminder to businesses to carefully considered how best to ensure that protection.  Where a brand consists of descriptive words, it is crucial to show that the brand has acquired a distinctive character.  Businesses that hold a CTM for a descriptive brand should carefully consider whether they should also register national marks in key countries to protect the brand in the regions where it is of most value.  In the battle of the Ukuleles, the UOGB were fortunate to have sufficient evidence to prove passing off or they would have found themselves in a very tricky position.