Trade mark decision

BL Number
Decision date
25 May 2007
Hearing Officer
Mr M Foley
09, 16, 25, 41
Frankie Goes to Hollywood Limited
Peter Gill, Mark O’Toole, Paul Rutherford & Brian Nash
Sections 3(6) & 5(4)(a)


Section 3(6): Opposition successful. Section 5(4)(a): Opposition successful.

Points Of Interest

  • None


The music group Frankie Goes to Hollywood was formed n 1983 and consisted of five persons namely Peter Gill, Holly Johnson, Mark O’Toole, Gerard O’Toole and Paul Rutherford. Shortly afterwards Gerard O’Toole left and was replaced by Brian Nash. The band was signed by a record label 2TT and over the next few years had a number of “hits” and gained a significant reputation. It was accepted and documented that while Holly Johnson had been instrumental in forming the band and coining the name, the goodwill and reputation of the band was owned by all five partners.

In 1987 Holly Johnson took the decision to pursue a solo career and left the band. The band ceased performing at this time. In 2003 members of the band were approached by a television programme “Bands Reunited” with a view to arranging a short concert for the programme. The members met in November 2003 but Holly Johnson declined to take part. The other members employed a new vocalist and took part in a Princes’ Trust Event. The new band went on to do a number of concerts up to 2005 when the application to register the mark in suit was brought to their attention.

The application to register the mark in suit was made on 2 April 2004 by the company Frankie Goes to Hollywood Ltd of which Holly Johnson is the principal shareholder and director.

Having studied the history of the music group and the supporting documentation the Hearing Officer concluded that the goodwill and reputation n the mark in suit was owned by all five of the original members. Thus Holly Johnson in the name of his company could not claim to own the mark in suit and if his company was to use the mark this would amount to misrepresentation from which damage would inevitably follow. Thus the opponents succeeded in the ground under Section 5(4)(a).

As regards the Section 3(6) ground, bad faith, the Hearing Officer concluded Mr Johnson had made the application to register the mark in suit without the knowledge of the other band members and that he had made the application to interfere with the activities and rights of the former partners. This act constituted bad faith and the ground under Section 3(6) also succeeded.

Full decision O/140/07 PDF document75Kb