Opposition by Musidor B.V. to registration of trade mark application number 1914182 (class 25) – JAGGER & STONE – in the name of We the Wild Ones Pty Ltd. [2021] ATMO 25 (24 March 2021)

Take the surname  of one of the world's most inimitable lead singers, combine with a common reference to one of world's most iconic and business savvy bands, employ evocative rock and roll imagery and copy to promote and sell clothing and what do you get? Pretty much everything you need to establish a bad faith ground of opposition in Australia.

Musidor B.V. (Musidor) is the commercialisation arm of messrs Jagger, Richards, Watts and Wood aka the Rolling Stones or 'Stones'. As guardian of the Stones' intellectual property rights including trade marks for ROLLING STONES and MICK JAGGER, copyright and licensing, Musidor has, over many years, been consistent and relentless in its pursuit of unauthorised parties who have sought to leverage the band's fame for their own commercial ends.

Little surprise, then, that Musidor took exception when We The Wild Ones Pty Ltd (WTWO), an Australian-based designer, manufacturer and retailer of clothing and fashion accessories sought to secure a monopoly to the use of JAGGER & STONE as a trade mark in relation to a range of clothing.

Musidor opposed registration of JAGGER & STONE on a number of grounds including that:

  • JAGGER & STONE was deceptively similar to Musidor's trade marks;
  • because of the reputation of the Rolling Stones and Mick Jagger, use of JAGGER & STONE by WTWO would be likely to deceive or cause confusion; and
  • use of JAGGER & STONE by WTWO would be contrary to law.

However, on this occasion, the easiest path home for Musidor in establishing its opposition was section 62A of the Trade Marks Act providing that a trade mark may be opposed on the ground that the application was made in bad faith.

'Bad faith' does not require dishonesty or fraud. Rather, the test focuses on the knowledge of the applicant at the time of making the application and whether, in the light of that knowledge, the applicant's behaviour fell short of acceptable commercial standards observed by reasonable and experienced persons in the particular area.

Citing Bennett J's consideration of 'bad faith' in DC Comics v Cheqout Pty Ltd [2013] FCA 478, the Hearing Officer noted that exploitative conduct or conduct designed to acquire a springboard or advantage could amount to conduct that falls short of acceptable commercial standards, and that an intention to use a trade mark in such a way as to gain a benefit by appropriating the indicia and reputation of another was sufficient to constitute bad faith.

Relying on the Stones' significant reputation as the longest performing 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 the sale of clothing in Australia, the Hearing Officer accepted Musidor's contention that the Rolling Stones and Mick Jagger are fashion icons.

WTWO argued that the adoption of JAGGER & STONE was reflective of definitions of the words and their resemblance to WTWO's directors – JAGGER being a reference to a psychotic demi-god and STONE being a reference to someone who is grounded, stable and down to earth.

Hearing Officer Brown seized upon WTWO's silence as to why, having established a following in the WTWO brand with the Instagram handle 'wethe_wildones', it pivoted to JAGGER & STONE and then used rock and roll iconography including electric guitars, amps and employed tag lines including 'I'm with the band' and 'If the music is too loud you are too old' to sell its clothing.

Taking the above into consideration, the Hearing Officer held that WTWO's conduct in using and seeking a monopoly for JAGGER & STONE sought to create an allusion to Mick Jagger and the Rolling Stones, was "designed to acquire a springboard or advantage and would be regarded as in bad faith by persons adopting proper standards".

Takeaways

  • Bad faith is back, baby! Try to springboard or gain a benefit by appropriating someone else's intellectual property and reputation and you leave yourself exposed to a finding of bad faith.
  • You can't always get what you want: In creating and adopting a brand and then seeking trade mark protection, it is best to conceive of something original, and preferable to steer clear of referencing or alluding to brand conscious cultural icons.
  • It's only rock 'n roll: but if you like it that much and want to leverage a brand, seeking a licence from the brand/trade mark owner is likely to be an infinitely better option than exposing oneself to potential liability. Trade mark owners may not agree to a licence in such cases, but where they do not, this further demonstrates the risks involved with a "better to ask forgiveness than permission" strategy.

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