Spotlight on Evidence in Abbey Road Trademark Opposition – Intellectual Property


Australia: Spotlight on Evidence in Abbey Road Trademark Opposition

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EMI (IP) Limited v Spotlight Pty Ltd [2021] ATM 40 (May 25, 2021)

ABBEY ROAD. Two words synonymous with music history and folklore. Not only the Beatles’ eleventh studio album, but the location of legendary EMI studios in London where many of the band’s songs were recorded. Yet, if a recent decision by the Australian Trade Marks Office stands, also a separate badge of origin for the thread of Spotlight Pty Ltd (Spotlight).

In a previous article, we looked at why trademarks are essential to a musician’s IP strategy. While a registered trademark grants its owner a legal right and a monopoly over the use of a particular sign in relation to specific goods or services, it is commonly mistakenly believed that obtaining registration of ‘a brand will provide an absolute monopoly for all products and services. services. The distinction is essential, particularly when formulating a brand strategy and considering the scope of protection desired.

The ABBEY ROAD decision

In September 2017, Spotlight, a retailer of yarns, fabrics, homewares and other related products, applied for registration of ABBEY ROAD in Australia in relation to various Class 23 yarns. IP Australia reviewed and accepted the request. In April 2018, EMI (IP) Limited (EMI) owned a trademark registration for 1092942a.jpg (ABBEY ROAD STUDIOS brand) initiated a trademark opposition procedure.

In support of the opposition, EMI argued that through its use of various ABBEY ROAD marks (the ABBEY ROAD marks) both in Australia and overseas, it had acquired a reputation in the ABBEY marks ROAD in Australia, so further use by Spotlight in relation to wire would be likely to mislead or confuse. EMI relied on Abbey Road Studios’ involvement in producing popular recordings since 1931, its use of the ABBEY ROAD STUDIOS trademark in Australia since 2012 for a range of products including sound recordings, books, clothing and amplifiers, the opening of the Abbey Road Institute in Melbourne, Australia in 2015, offering music-related courses and a high volume of web traffic to EMI’s ABBEY ROAD website. EMI also argued that the use of ABBEY ROAD with striped imagery was likely to be associated with the Beatles’ iconic album cover.

Spotlight noted that it owns the ABBEY ROAD brand in New Zealand and Singapore for the yarn and that its ABBEY ROAD brand was created in 2017 taking inspiration from other fabric brands that make playful references to music such as “wool and the gang” and “heal”. wool’. Spotlight sold ABBEY ROAD branded yarns in combination with well known song pieces such as ‘The Wind Cries Merino’, ‘Truly Madly Mohair’, ‘Born to be Wool’, ‘Kung Fu Cotton’ and ‘Strawberry Fields Mohair “. While aware of the ABBEY ROAD recording studio in London, Spotlight considered the use of ABBEY ROAD in relation to the thread “an appropriate but unspecific allusion to several musical acts”. Legal advice was sought and a trademark search was carried out to confirm that there was no impediment to the use of ABBEY ROAD with respect to spun products and Spotlight argued that it was unlikely to be confused between its ABBEY ROAD branded spun products and EMI’s London Recording Studio.

Evidence is key

In evaluating EMI’s evidence, the Hearing Officer distinguished between alleged and actual use of the trademark ABBEY ROAD STUDIOS. Questions have been raised regarding EMI’s authorization or control over proof of third-party products offered on eBay and Amazon. Notably, there was also an absence of sales figures or advertising spend; and no documentary evidence of a link between the Abbey Road Institute and EMI (other than media references).

In dismissing EMI’s grounds of opposition, the Hearing Officer concluded that:

  • EMI’s goods and services were not similar to Spotlight’s thread;

  • the fact that EMI was associated with a well-known studio in London in respect of the recording studio services offered in the United Kingdom did not, in the absence of sufficient evidence, provide a basis for to conclude that ABBEY ROAD had acquired a reputation in Australia;

  • Spotlight’s use of ABBEY ROAD would not be contrary to law, as the misleading or misleading behavior test under Section 18 of the Australian Consumer Law (“ACL”) requires the establishment of a significant reputation by EMI;

  • Spotlight’s decision to adopt and seek protection from ABBEY ROAD with respect to the wire was not a decision made in bad faith, even though Spotlight was aware of Abbey Road studios in London because Spotlight “had obtained legal advice and correctly concluded that there was no existing registration in respect of the Claimant’s Goods”.

As trademark owners associated with the music industry grow accustomed to protecting song and album titles, lyrics and album images as market identifiers (in order to capitalize on other sources of income through the sale or licensing of goods), trademark litigation in this area is likely to proliferate. Therefore, in applying for trademark protection, it is fundamentally important to strategically consider how a trademark is to be used and to appropriately align the scope of protection with the intended use.

Take away food

The ABBEY ROAD decision is a timely reminder that:

  • the burden of trademark opposition proceedings lies with the opponent. Reputation will not be inferred without clear evidence (including in particular sales and marketing information, where applicable), and framing and explaining that evidence remains essential to the success of oppositions;

  • even if a reputation can be established, reputation without likelihood will not prevail, so reputation-based grounds have limited utility against goods/services less closely related to those for which reputation subsists;

  • particular attention should be given to seeking appropriate goods and services protection to avoid a situation where an unrelated third party might be able to take advantage of an association with an iconic album or recording studio able to act as distinctive origin badges;

  • where possible, protection should be sought for the separate elements of a mark which together constitute a mark intended for the consumer in order to allow flexibility of use and application.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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