The Rubettes rocked by a battle over band name rights

British glam rock band The Rubettes have been at the centre of legal challenges, particularly concerning rights to the band’s name. Last year, the European Union Intellectual Property Office (‘EUIPO’) upheld a declaration of invalidity filed by the band’s lead singer, Alan Williams, against the European Union Trade Mark (EUTM) for RUBETTES registered by the band’s bass guitarist Mike Clarke in relation to various goods and services in classes 9, 35 and 41 (and notably “recorded content”, “promotional services” and “entertainment”).

Williams filed a cancellation action against the RUBETTES trade mark relying on Article 59(1)(b) of the EU Trade Mark Regulation (’EUTMR’), which provides grounds for invalidation of marks filed in bad faith. 

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing the EUTM. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a EUTM departs from accepted principles of ethical behaviour or honest commercial and business practices.

In this case, Williams argued that Clarke had no legitimate claim to the RUBETTES name, as his involvement in the band was limited to a paid-per-show role as an employed musician. Williams submitted numerous documents in support of his position, showing how the band was created and discussing its success. These elements also revealed the various issues around the RUBETTES name and how the parties agreed to use it. Williams notably relied on a decision from the UK Court invalidating Clarke’s UK registration for THE RUBETTES since it was filed in bad faith. While a decision of a national court is not binding for the EUIPO, it was argued that the reasoning and outcome should be considered, as it confirmed that Clarke had previously acted in bad faith by filing a nearly identical mark.

Clarke submitted a few documents in response and claimed that he was involved with the band since at its creation in 1974. He also contended that the EUTM application was necessary for the remainder of the band to continue performing when Williams and his wife decided to relocate to Australia.

The EUIPO noted that Clarke’s actions appeared to be aimed at “usurping” Williams’ established rights to the “RUBETTES” name. Indeed, it was clear from the evidence, also supported by the judgment of the UK Court, that there was a direct and long-standing relationship between Williams and Clarke, which imposed on Clarke the duty of fair play. The fact that Williams relocated to Australia was not decisive. The EUIPO remarked that, if Clarke’s primary goal was indeed continuity of performance, it would have been more logical to register the mark under a variation such as “The Rubettes featuring Mike Clarke”. This would have reflected both Clarke’s individual role within the band and the coexistence of other band members using similar names. In fact, Williams’ own performance name is “The Rubettes featuring Alan Williams”. 

In looking further at Clarke’s actions, the EUIPO noted that Clarke pursued the registration unilaterally, without consulting Williams, despite their long-standing professional association. Following registration, Clarke even attempted to restrict Williams and his agents' use of “Rubettes” in their promotional materials, actions which the EUIPO flagged as indicative of possible bad faith. It was also highlighted that Clarke’s conduct breached the principle of fair dealing expected in contractual relationships between parties. Here, the EUIPO suggested that Clarke’s intent was to obstruct Williams from using a name to which he had long-established rights and prevent him from entering into the EU market.

Where bad faith is established, a trade mark is typically invalidated in its entirety, regardless of the dissimilarity between its goods/services and the proprietor’s primary business activities. Accordingly, Williams’ request for invalidation was upheld for all the goods and services covered by the registration, extending even to “advertising services” unrelated to the band’s core activities.

This case highlights the difficulties in trade mark disputes when the parties share a longstanding professional and financial history. It also reinforces the EU’s commitment to protecting against “brand usurpation”, a challenge particularly relevant in the entertainment industry, where individual and collective identities frequently intersect. For musicians, artists, and creators, the case stresses the need for clearly delineated rights to prevent disputes over shared names that carry significant professional and commercial implications.