Flying Music are behind the highly successful “Thriller Live” show, now at the West End. This is not authorised by the Jackson estate, however, who duly opposed Flying Music’s attempt to register THRILLER LIVE as a trade mark.. Emma Percival reports the verdict in a case which may run as long as the show.
Topic: Brands
Who: Triumph International Inc; John Branca and John McCain as administrators of the estate for the late Michael Jackson; The Flying Music Company Limited
When: March 2012
Where: UK
Law stated as at: 9 March 2012
What happened:
The Intellectual Property Office (IPO) has partially upheld oppositions by Triumph International Inc ("Triumph") and John Branca and John McCain as administrators of the estate of Michael Jackson (together the "Opponents"), against an application by The Flying Music Company Limited ("Flying Music"), for registration of the word mark THRILLER LIVE for various audio recording goods and entertainment services.
The Opponents were only able to successfully oppose the application in relation to recorded music and images and certain entertainment services, on the basis that the application had been made in bad faith.
The Opponents
THRILLER is a work of pop music, dance and video (the "Work") created by Michael Jackson. The album titled THRILLER, which was accompanied by a song and video of the same name, was released in 1982 and has since become the bestselling album of all time, selling approximately 109 million copies worldwide by the end of 2009. The Work has been merchandised in the UK and elsewhere on a substantial scale through the sale of costumes, clothing, mugs and other objects.
The goodwill associated with the Work and associated merchandise is owned by Triumph. Triumph is a Californian company to which Michael Jackson assigned any trade mark rights he had in THRILLER in 1984. The company was wholly owned by Michael Jackson before his death and is now owned by his estate, administered by John Branca and John McCain.
Flying Music
Flying Music was established in 1982 by Paul Walden, who had promoted touring acts throughout the seventies including David Bowie and The Who. The company was set up to produce and promote live tours and has since produced numerous nationwide tours for a variety of artists.
'Thriller Live' is a musical theatre production by Flying Music which features the music of Michael Jackson and the Jackson 5. The show is not authorised by the estate of Michael Jackson or Triumph as assignee to any trade mark rights in the Work.
After its debut in 2006, the production spent three years touring the UK and Europe before making its highly acclaimed West End debut.
The Dispute
In September 2008, Flying Music applied to register THRILLER LIVE as a UK trade mark in class 9 to cover, amongst other things, recordings of live entertainment shows, recordings of sounds and images in any media and recordings of music. The trade mark was also applied for in class 41 to cover theatrical and show business entertainment services and entertainment services in the form of musical theatre, amongst others. The Opponents filed an opposition to the application in October 2009.
THRILLER as a trade mark and the likelihood of confusion
The Opponents argued that THRILLER is a 'well known' mark and as such should be protected under section 56 of the Trade Marks Act 1994 (the "Act"). Section 56 enables a proprietor trade mark which is 'well known' in the UK, and who is a national or resident of a country which is a signatory of the Paris Convention or WTO Agreement, to obtain an injunction to prevent the use of an identical or similar mark in relation to identical or similar goods where such use is likely to cause confusion in the UK.
The Opponents contended that THRILLER was 'well known' because consumers, on seeing an album titled THRILLER, would immediately understand that it was an album by, or associated with, Michael Jackson. They claimed that the application should be refused under section 5(3) because THRILLER LIVE would take advantage of or be detrimental to, the distinctive character of the unregistered THRILLER mark.
Additionally, the opponents contended that registration of the THRILLER LIVE mark should be refused under section 5(2) (b) of the Act because the THRILLER mark is 'well known' for the Work, the applicant's goods and services are similar and consequently there would be a likelihood of confusion as to the origin of goods and services provided under the THRILLER LIVE mark.
Flying Music argued that THRILLER has only been used as the name of a creative work protected by copyright. Therefore THRILLER is not perceived as a trade mark by consumers as it does not distinguish the commercial source of the Work and should not be regarded as a trade mark for the purposes of section 56 of the Act.
The IPO agreed with Flying Music as the Opponents could not show that consumers perceived THRILLER as a 'well known' trade mark. No evidence had been provided to demonstrate that consumers perceived goods and services with the THRILLER mark to be from a distinct commercial source. The copyright in THRILLER did not operate as an indication of the commercial source as copyright material is often commercialised by others through licencing and as such consumers only perceived THRILLER as the title to a song or album, not a trade mark.
Therefore THRILLER LIVE was not entitled to protection under section 56 and could not bring a claim under section 5 of the Act to prevent THRILLER LIVE being registered as a trade mark.
The passing-off claim
The Opponents' second ground of opposition was that, under section 5(4)(a) of the Act, THRILLER LIVE should not be registered as a trade mark in order to protect their unregistered rights in the THRILLER mark.
The passing-off claim failed. The IPO found no evidence that other musical shows named after song titles, such as 'Mamma Mia', were perceived by the public to be endorsed by the original artist. The use of THRILLER LIVE in relation to the goods and services listed in the application, would not amount to a misrepresentation leading, or likely to lead, to confusion among the public for the purposes of a passing off challenge.
Application in bad faith
The Opponents' final ground for opposition was that the application should be refused under section 3(6) of the Act. Section 3(6) states that an application should not be registered if, or to the extent that, the application was made in bad faith.
The Opponents argued that allowing the registration may prevent them from continuing to exploit their rights in the Work in recordings, or for goods and services that are natural ways to commercially exploit the Work.
The IPO upheld the opposition in relation to certain performance rights on the basis that Flying Music knew third parties, including Michael Jackson or his assigns, had a commercial interest in the sale of music, images, entertainment services and theatrical and show business entertainment services entitled THRILLER. An applicant for a trade mark, as a reasonable person in the relevant field of commerce, would not be observing the normal standards of commercial behaviour where the registration of the mark would lead to Michael Jackson or his assigns having to apply for a trade mark licence in order to continue to commercialise the performing rights in the Work.
However, the opposition failed on this ground to the extent that they covered (amongst other things) musical theatre services, since Michael Jackson had never given musical theatre performances under the name THRILLER, nor was there any evidence that he intended to. The fact that Flying Music were staging the THRILLER LIVE musical prior to filing the application, meant that they had a 'legitimate reason' to apply for registration of the trade make in for these services.
Why this matters:
This decision is a stark reminder to brand owners of the importance of obtaining registered trade mark protection for marks that they want to prevent others from using. If the Opponents in this case had registered UK or Community trade mark rights in the THRILLER mark this partial success, which has been hard won, could have been a more comprehensive victory. It is also a relatively rare example of a (partially) successful 'bad faith' argument being employed in such opposition proceedings.
