Australia: The stones get satisfaction in the victory of the opposition to the mark of bad faith
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Opposition by Musidor BV to the registration of trade mark application number 1914182 (class 25) – JAGGER & STONE – on behalf of We the Wild Ones Pty Ltd.  ATMO 25 (March 24, 2021)
Take the last name of one of the world’s most inimitable singers, combine with a common reference to one of the world’s most iconic and business-savvy bands, use evocative rock and roll imagery and copy to promote and sell clothes and what do you get? Pretty much everything you need to establish a bad faith ground for opposition in Australia.
Musidor BV (Musidor) is the marketing arm of MM. Jagger, Richards, Watts and Wood aka the Rolling Stones or ‘Stones’. As custodian of the Stones’ intellectual property rights, including trademarks for ROLLING STONES and MICK JAGGER, copyright and licensing, Musidor has, for many years, been consistent and relentless in pursuing the parties unauthorized parties who sought to exploit the group’s reputation for their own commercial purposes.
It’s no surprise, then, that Musidor was an exception when We The Wild Ones Pty Ltd (WTWO), an Australia-based designer, manufacturer and retailer of fashion clothing and accessories, sought a monopoly on the use of JAGGER & STONE as a trademark. compared to a range of clothing.
Musidor opposed the recording of JAGGER & STONE for a number of reasons, including:
- JAGGER & STONE was deceptively similar to Musidor’s marks;
- due to the reputation of the Rolling Stones and Mick Jagger, WTWO’s use of JAGGER & STONE would be misleading or confusing; and
- WTWO’s use of JAGGER & STONE would be against the law.
However, on this occasion, the easiest route for Musidor to establish its opposition was Section 62A of the Trade Marks Act, which provides that a mark may be opposed on the ground that the application has was made in bad faith.
“Bad faith” does not require dishonesty or fraud. Rather, the test turns on the plaintiff’s knowledge at the time the claim was made and whether, in light of that knowledge, the plaintiff’s conduct fell below acceptable commercial standards observed by reasonable persons. and experienced in the field in question.
Citing Bennett J’s consideration of “bad faith” in DC Comics v Cheqout Pty Ltd  FCA 478, the Hearing Officer noted that exploitative behavior or behavior aimed at gaining a springboard or advantage could constitute behavior that falls outside acceptable commercial standards, and that an intention to use a trademark so as to obtain an advantage by appropriating the indicia and reputation of others was sufficient to constitute bad faith.
Building on the Stones’ significant reputation as the oldest and one of the most successful rock and roll bands of all time, Jagger’s status as an enduring icon of music and pop culture , and an extensive record of selling and licensing clothing sales in Australia, the hearing adviser accepted Musidor’s claim that the Rolling Stones and Mick Jagger are fashion icons.
WTWO argued that the adoption of JAGGER & STONE reflected the definitions of the words and their resemblance to WTWO administrators – JAGGER being a reference to a psychotic demigod and STONE being a reference to someone who is grounded, stable and down to earth.
Hearing Officer Brown seized on WTWO’s silence to explain why, after establishing a following in the WTWO brand with the ‘wethe_wildones’ Instagram handle, he pivoted to JAGGER & STONE, then used the iconography rock and roll, including electric guitars, amps, and slogans employed, including “I’m with the band” and “If the music’s too loud, you’re too old” to sell his clothes.
In view of the foregoing, the Hearing Officer considered that WTWO’s conduct in using and seeking a monopoly for JAGGER & STONE was intended to create an allusion to Mick Jagger and the Rolling Stones, was “designed to gain a springboard or an advantage and would be considered in bad faith by persons adopting appropriate standards”.
Take away food
- Bad faith is back, baby! Attempt to leverage or gain an advantage by appropriating someone else’s intellectual property and reputation and you open yourself to a finding of bad faith.
- You can’t always get what you want: by creating and adopting a brand, then seeking brand protection, it’s best to design something original and best to avoid referencing or alluding to brand-conscious cultural icons.
- It’s just rock ‘n roll: but if you like it so much and want to leverage a trademark, licensing the trademark/trademark owner is probably an infinitely better option than s expose to potential liability. Trademark owners may not agree to a license in such cases, but failure to do so further demonstrates the risks of a “better ask forgiveness than permission” strategy.
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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