Trade mark decision

BL Number

O/478/02

Decision date

20 November 2002

Hearing officer

Mr Geoffrey Hobbs QC

Mark

THE SUPREMES

Applicant

Mary Wilson Enterprises Inc

Opponent

Lynda Lawrence & Scherrie Payne

Opposition

Sections 3(6) & 5(4)(a)

Result

Section 3(6): - Appeal dismissed

Section 5(4)(a): - Appeal allowed

Points Of Interest

• 1. See also Hearing Officer's decision dated 2 April 2001 (BL O/458/01).
• 2. Appointed Person's Interim decision dated 26 February 2002 (BL O/136/02).

Summary

The Appointed Person reviewed the evidence before him and determined, in general, that neither party had substantiated the claims made in the pleadings. However, the following facts emerged:

1. Mary Wilson had applied to register the mark THE SUPREMES in the USA in 1974 but after opposition by Motown Record Corporation the application was transferred into their name and they still have ownership of the mark in the USA. In the assignment documents Mary Wilson gave up her rights to exploit the name except in very specific circumstances in conjunction with Motown.

2. Mary Wilson left THE SUPREMES about June 1977 and the group disbanded some months later. Mary Wilson claimed to have used the name THE SUPREMES between 1974 and 1997 but no evidence was filed to substantiate this claim. Claims to proprietorship through two companies The Supremes Inc and Mary Wilson Enterprises Inc were found to be merely claims with no evidence to support them.

3. In her evidence Mary Wilson claimed to be endeavouring to preserve the integrity of the name THE SUPREMES. She also stated "While I myself have no intention to form any more groups of Supremes I am still the only member who has any rights to use the name, so if they (Jean Terrell, Scherrie Payne and Lynda Lawrence) continue to do these kinds of things they will be sued."

4. In the UK THE SUPREMES were reformed in 1985 and in the period to 1996 Lynda Lawrence and Scherrie Payne and others participated. The Appointed Person concluded that it was more a new group using an existing name. It had no apparent links with Motown. In the USA they performed under the name "FORMER LADIES OF THE SUPREMES". Despite their use of the name THE SUPREMES the Appointed Person was not satisfied that they had established proprietorship of the mark in the UK, merely that they had build on the goodwill generated by Motown and this goodwill still exists through the continuing sales of recordings of the original group.

5. With regard to the grounds of opposition the Appointed Person decided that as the present opponents had not an identifiable and exclusive goodwill in the UK they could not succeed in a passing off action as envisaged by Section 5(4)(a). He thus allowed the appeal against the Hearing Officer's decision on this ground.

6. With regard to the ground under Section 3(6) the Appointed Person refused the appeal against the Hearing Officer's decision to find for the opponents on this ground. In his view neither Mary Wilson nor Mary Wilson Enterprises had any claims to proprietorship. Mary Wilson was pursing a solo career and was not proposing any more groups of Supremes and she appeared to want to interfere in the apparent lawful activity of the opponents who had used, and were continuing to use, the name THE SUPREMES in the UK.