Trade mark decision

BL Number

O/220/05

Decision date

2 August 2005

Hearing officer

Mr G Salthouse

Mark

AMERICAN DRIFTERS

Classes

41

Applicant

The American Drifters

Opponent

The Drifters UK Limited

Opposition

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

Result

Section 5(4)(a): - Opposition successful.

Section 3(6): - Not considered.

Points Of Interest

• 1. None

Summary

The opponent detailed the background to the musical group "THE DRIFTERS", formed in 1953 and the fact that the group was run by a company with the name Drifters Inc whose principal was a Mr Clyde McPhatter. None of the members of the group at that time or since have ever been officers or shareholders of the controlling company. At all times they have been salaried employees.

In 1971 Mr Phil Luderman was appointed as tour manager and he continues to hold that position. In 1976 the name THE DRIFTERS was assigned to Treadwell Drifters Inc with a Mrs Faye Treadwell as the sole shareholder and manager of the group. Mr Mark Lundquist was appointed as the group's agent and he continues to hold that position.

In 2001 Mr Phil Luderman was appointed the group's manager and Ms Treadwell departed from the UK owing substantial sums of money, having been made bankrupt. From that time on Mr Luderman and Mr Lundquist managed and controlled the group. They fulfilled outstanding obligations of the group and paid some of Ms Faye Treadwell’s debts. It is stated that Ms Treadwell has never objected to continuing use of THE DRIFTERS name and management of the group.

The opponent states that the DRIFTERS continue to perform in the UK and gives turnover figures for 2000/1 of £179K rising to £387K in the year 2003/4. Significant advertising of the group continued during this period.

The applicant filed no evidence but the opponent comments on its claim to have used the name THE AMERICAN DRIFTERS in the UK. Some use occurred in 1989/9 but this was in the form TATTID (The American Tribute to the Drifters). Where they have used the name The American Tribute to the Drifters, "THE AMERICAN" element of the name is usually shown much smaller so that the word DRIFTERS predominates, thus leading to confusion.

Under Section 5(4)(a) - Passing Off - the Hearing Officer accepted that the opponent had proved a reputation and goodwill in the name THE DRIFTERS at the relevant date. As the names THE DRIFTERS and THE AMERICAN DRIFTERS were confusingly similar there was likely to be misrepresentation and damage to the opponent's business. Opposition succeeded on this ground.

In view of his decision under Section 5(4)(a) the Hearing Officer did not consider the Section 3(6) ground.