The UK High Court Has Ruled on the Battle of the Ukelele Orchestras

In the case of The Ukulele Orchestra of Great Britain v Clausen & Anor, the United Kingdom High Court has passed judgment in the battle of the European ukulele orchestras. The Ukulele Orchestra of Great Britain (UOGB) was successful in establishing passing off by the German-based United Kingdom Ukulele Orchestra (UKUO). Unfortunately for the UOGB, the Court found in favour of the defendants’ counterclaim that the UOGB’s registered Community Trade Mark (CTM) was invalidly registered.

The UOGB has had a successful 30 year career and was the owner of the registered CTM for THE UKULELE ORCHESTRA OF GREAT BRITAIN. The UKUO, established in 2009, was founded by the German promoter Erwin Clausen and has been the recipient of reviews acknowledging the similarities between the two groups.

However, the Court found in favour of the Defendants’ counterclaim, and stated that the UOGB’s mark was invalidly registered according to Article 7(10)(c) of the CTM Regulation. Article 7(10)(c) serves to ensure that descriptive marks that relate to characteristics of the goods or services offered should be freely used by all traders, or in this case artists, who offer those goods or services. The UOGB’s CMT consisted only of a mark that was descriptive of what the group was, an orchestra, and the location of their origin, Great Britain. Although the UOGB claimed that their mark had acquired sufficient distinctiveness to avoid invalidity based on descriptiveness, the court disagreed because it found that the mark had not acquired sufficient distinctiveness in all relevant EU markets.

The Court did opine that if the mark had been valid, there would have been a finding of infringement under the CTM Regulation. Although the UKUO did plead a defence to such a potential finding of infringement, the Court found that their actions were “outside of honest practices,” rendering them ineligible.

Ultimately, the Court did find that the German-based ukulele troop was in fact causing confusion and so the claim of passing off succeeded. The Court was satisfied that, based on the evidence, there was a likelihood of confusion between the two orchestra names. The UKUO’s name misrepresents to the public, who recognize the UOGB to represent a particular group, that the two orchestras are either the same, or otherwise commercially connected. The Court concluded by finding that that the UOGB’s goodwill was damaged as they had suffered a loss of control over their reputation as performers.