1 novembre 2019

Club promoter not the only one to run parties "in the sun"

A promoter of clubbing and rave events has had its claim for passing off dismissed by the Intellectual Property Enterprise Court (IPEC) , in respect of the words "in the sun" that are included in the name of both its own and the first defendant's clubbing and rave beach holidays.

The claimant had been using the words "in the sun" in varying ways since 2003 through its clubbing holidays called "Innovation in the Sun", "Inno in the Sun" and "In the Sun". The claimant's director claimed that, through the events it had run since 2004, it had built up goodwill associated with the phrase "in the sun" itself.

The two directors of the first defendant (the second and third defendant) are professional music producers who came up with an idea for a rave event in Kavos in late 2016. They decided on the name "Unity in the Sun", which they quickly announced on Facebook.

The defendants denied that any goodwill attached to the name of the claimant's "In the Sun" event: it was purely descriptive and also used by third parties who run similar music events across Europe.

IPEC considered that although "in the sun" was not entirely descriptive of such clubbing holidays, consumers are more likely to see the phrase as a generic term, not one clearly associated with only the claimant's events.

There was not enough evidence of goodwill in that specific phrase to support a claim of passing off. The Court did, however, note that there was goodwill in the overall brand of the "Innovation in the Sun" events: originally, the claimant's events had started off with the name "INNOVATION", and that word had more distinctive value.

Although the claim failed, Miss Recorder Amanda Michaels went on to examine whether the defendants had nevertheless misrepresented their Unity in the Sun music event as being associated with the claimant.

The second and third defendants asserted that both parties' events were very different, as each hosted different types of music and therefore would attract different clientele.

However, Miss Michaels did not agree: the difference in music played at their respective events would not preclude confusion – the events were all still seven-day, overseas clubbing holidays.

The evidence produced by the claimant to try and show that there had been actual confusion was also weak and minimal. It was the Court's view that there was enough difference between the names that most people would not be deceived.

In her judgment, Miss Michaels was critical of the evidence produced by both sides. The claimant had not provided direct evidence that its customers attributed the phrase to its events and had provided some weak evidence of the scale and frequency of its promotions.

It was therefore difficult to determine when any claimed goodwill would have begun. Furthermore, the claimant provided weak inconclusive evidence that there had been actual confusion between the parties' events.

The defendants produced virtually no evidence to show that the phrase was in common use by the parties nor any sufficient evidence related to third party use. Miss Michaels was also openly critical of the defendants' "bullish" position from the outset when the claimant first approached them, to remind them that, although successful here, they were still not faultless.

This case serves as a reminder that any claim of passing off based on goodwill must be based on sufficient evidence to show that people clearly associate the mark with the claimant's business.

Case reference: [2019] EWHC 2138 (IPEC)

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