Facts

The claimant, Ian Thomas, and the defendant, Winston Thomas, are half-brothers. Between about 1986 until 2016 they (and others) were members of a band, or Jamaican Sound System, called “Love Injection” or “Luv Injection”. A Jamaican Sound System (Sound) consists of music equipment and a group of members. Some members perform front of house, including someone who selects and plays the records and another person on the microphone (Mic-Man), entertaining and engaging with the audience. Other members play a more back stage role, such as looking after, running and maintaining the equipment.

At that time, Ian acted as a selector and/or as a Mic-Man for the Sound, whereas Winston was essentially its manager, although on occasions he also performed a front of house role as a Mic-Man.

The band split in 2016, following which Winston started to perform under the name “Luv Injection” and “Luv Injection Sound”. There was evidence of the group performing at events in October, November and December 2016. Subsequently, Ian also started to perform along with others under the name “Love Injection”, and less frequently “Luv Injection”. Their first performance was in August 2017.

Following a dispute over the registration of LUV INJECTION as a UK trade mark by Winston, which ended up at the IPO, the Hearing Officer found that, at the date of the split in 2016, goodwill in the name “Luv Injection” had been owned by the members of the original Luv Injection Sound as a partnership. On that basis, and because there had been no subsequent transfer of that goodwill to Winston, Winston was not personally entitled to the goodwill in the name and was not, therefore, entitled to register the name as his trade mark.

Winston did not appeal the Hearing Officer’s decision.

In October 2019, Ian issued proceedings for passing off against Winston. He submitted that he personally was entitled to bring the proceedings and that, as a result of the decision of the Hearing Officer, Winston was estopped from denying that entitlement. The court at first instance agreed and granted an order striking out most of Winston’s defence.

Winston appealed and the Court of Appeal agreed that Winston could not claim that he alone owned the goodwill in the name after the 2016 split. However, it found that there was nothing in the Hearing Officer’s decision to prevent Winston from relying on alternative arguments, such as that the relevant goodwill was not owned by Ian but was a partnership asset owned by the members of the original Luv Injection Sound and that, as Winston was one of those members, only the partners all together could sue him for passing off.

Ian then reformulated his passing off claim to state that, although at the date of the split, the goodwill in the “Luv/Love Injection” name was a partnership asset owned by all members of the original Luv Injection Sound, the goodwill was now owned by Ian personally, alternatively by his new Love Injection band, because: (i) after the split, Winston had done nothing to obtain his share of the goodwill; and (ii) as the “front of house” and prominent members of the original Luv Injection Sound, Ian and Billy, another of the founder members, had “appropriated” the goodwill because the members of Ian’s new Love Injection band were seen by members of the public as the real musical members.

Therefore, Ian argued, by using the name “Luv injection” for his new band, Winston was passing off his goods and services as those of Ian. Further, by using dub plates (recordings made on acetate discs by the original Luv Injection Sound for competitions) which mentioned Ian and/or Billy, Winston was also passing off his new Luv Injection band as being the original Luv Injection Sound or, in the alternative, passing it off as being connected with Ian.

Decision

Nicholas Caddick QC, sitting as a Deputy Judge of the High Court, said that according to the evidence, Winston’s new Luv Injection band had been the first to start performing using the “Luv Injection” name. As a result, it was vulnerable to being sued by the partners of the original Luv Injection Sound, but not by the partners of Ian’s new Love Injection band for the simple reason that it was not then in existence. Therefore, as at the relevant date (i.e., when Winston’s Luv Injection band started using the “Luv Injection” name), Ian’s new Love Injection band had no protectable goodwill in the name and there could have been no misrepresentation that Ian’s band was in any way connected to Winston’s band.

Therefore, any action against Winston’s Luv Injection band had to be based on the goodwill of the original Luv Injection Sound. That is why Ian had claimed that he had “appropriated” that goodwill. He did not argue that there had been any transfer from the original Luv Injection Sound to Ian, but that the issue as to where goodwill lay was, as a matter of fact, with Ian (and Billy) who had always been the public face of the real Love/Luv Injection band, as its front of house. Accordingly, he said, by continuing to perform using the “Love Injection” name, the goodwill had simply attached itself to them. Effectively, they had appropriated it.

In Mr Caddick QC’s judgment, there was absolutely no substance in this argument, and he had no hesitation in rejecting it:

• as a matter fact, the goodwill in the “Love/Luv Injection” name had accrued to and, as at October 2016, was owned by the original Luv Injection Sound partnership, including Winston, meaning that the argument that Ian was “one of the front men for more than 30 years alongside [Billy]…” was irrelevant;
• whilst whoever was front of house when Ian’s Love Injection band subsequently started performing might be relevant to who (as a matter of fact) owned the goodwill in relation to Ian’s Love Injection band, it would not and could not affect the ownership of the already existing goodwill in relation to the original Luv Injection Sound;
• there was no way that the fact that Ian and Billy performed as front of house in Ian’s Love Injection band could possibly be said to have resulted in goodwill owned by the partners of Luv Injection Sound becoming vested instead in Ian, or in Ian and Billy, or in the members of Ian’s Love Injection band;
• where property (including goodwill) is owned by someone, another person cannot generally acquire title to that property simply by appropriating it; a transfer was needed, either by way of an agreement or by operation of law; and
• Ian’s argument that “appropriation” or “misappropriation” was a means by which goodwill could pass without a formal transfer and was the basis for an action in passing off was “completely misconceived”.

Mr Caddick QC also rejected the argument that Winston had abandoned his interest in the goodwill owned by the original Luv Injection Sound partnership because he had not actively sought to realise his share in the partnership assets. In fact the opposite was true, as Winston had continued using the “Luv Injection” name after the split and without any break.

As for the dub plates, Mr Caddick QC said that Ian personally did not have any right to claim that use of a dub plate by Winston’s Luv Injection band might lead people to believe that it was the same group as the original Luv Injection Sound. Even if there was a misrepresentation leading to damage, any cause of action would lie with the original Luv Injection Sound, not with Ian.

Ian also had no cause of action insofar as Winston had used a dub plate referring to Billy.

Mr Caddick QC also rejected Ian’s alternative claim that use by Winston’s Luv Injection band of a dub plate that referred to the original Luv Injection Sound before the split amounted to passing off because it involved a misrepresentation that Ian, as a former member of that band, was connected with Winston’s Luv Injection band:

• to succeed, Ian had to establish that there was goodwill attaching to his name personally and there was no evidence to support that argument; and
• even if Ian could establish goodwill in his own name, to succeed, he also had to establish that Winston’s use of the dub plates would mislead people into believing that Ian was connected with Winston’s band and no evidence was adduced in support.

The claim was dismissed. (Ian Thomas v Luv One Luv All Promotions Ltd [2022] EWHC 964 (IPEC) (27 April 2022) – to read the judgment in full, click here).