Annette Campbell and Bente Zaber v Catherine Hughes (IAN ADAM): Name of Recently Deceased

Overturning the decision of a hearing officer of the UK Intellectual Property Office, Geoffrey Hobbs QC has held that an application to register the name of the well known deceased voice coach Ian Adam by his former business associate had been made in bad faith (Annette Campbell and Bente Zaber v Catherine Hughes (IAN ADAM) [2011] BL O-094-11).

BACKGROUND

Catherine Hughes, an assistant to Mr Adam, provided voice training services to clients at his studio, often standing in for Mr Adam. Shortly after Mr Adam’s death, Ms Hughes applied to register the name IAN ADAM as a UK trade mark in Class 41 covering, “Education; providing of training, voice training, voice coaching; voice lessons; entertainment; sporting and cultural activities”.

The application was opposed by Annette Campbell—Mr Adam’s niece—and Bente Zaber—a former business partner of Mr Adam—on various grounds, including that the application had been made by Ms Hughes in bad faith under Section3(6) of the Trade Marks Act 1994. The Section3(6) claim was the only point on which the appeal was based.

DECISION

Mr Hobbs QC found that the only living relatives of Mr Adam were Annette Campbell and her four
brothers and that Mr Adam had died intestate and in debt. According to the Administration of Estates Act 1925, Mr Adam’s real and personal estate would have vested in the Public Trustee until the grant of administration. Any residuary estate would have belonged to the Crown as bona vacantia. Therefore neither party actually had any entitlement, legal or beneficial, to any assets of Ian Adam’s estate.

The estate comprised the goodwill in the business that Ms Hughes referred to as the Ian Adam Song Studio. Mr Hobbs QC said that by filing the application for the IAN ADAM trade mark, Ms Hughes had sought to secure the goodwill of the Ian Adam Song Studio for herself as sole successor in business. The question was whether this amounted to “bad faith” under Section3(6) of the 1994 Act.

Mr Hobbs QC said that the line separating legitimate selfinterest from bad faith is only crossed if an applicant has sought to acquire rights of control over the use of the sign in an improper manner or for an improper purpose. To assess this, all factors relevant to the case must be taken into account, including the intention of the applicant at the time of filing.

Mr Hobbs QC found that, on the death of Mr Adams, Ms Hughes had clearly decided to “Step into
his shoes so far as she could by continuing to operate the business…”. The evidence showed that
it was “more probable than not” that Ms Hughes realised that the business and associated goodwill and reputation were assets of Mr Adam’s estate. Ms Hughes had indeed sought, for her own benefit, to exclude the surviving goodwill and reputation attaching to the name IAN ADAM from the estate that she was purporting to administer when she filed the trade mark application. The application

had therefore been made for an improper purpose, rendering it objectionable on the ground of bad
faith under Section3(6). Mr Hobbs QC rejected the application for all the services specified, other
than “sporting activities”, as he had no reason to believe that use of the mark in relation to “sporting activities” would capitalise on the goodwill and reputation belonging to the estate.

COMMENT

The argument before the hearing officer had largely been based on guidance in The Work Manual
published by the Trade Mark Registry which provides that “Where third parties apply to register the
name of a famous individual or a recently deceased famous individual an objection under Section 3(6) of the Act may be appropriate”. The opponents argued that Mr Adam was a “famous individual”. The hearing officer had decided that the guidance was really directed at situations such as when Princess Diana and Elvis Presley had died and people had tried to cash in on their name. Although Mr Adam had a strong reputation as a voice coach, the hearing officer had hesitated to say that he would have been regarded as famous. While this was not part of the appeal, Mr Hobbs QC noted that there was

…No wooden rule to the effect that any application to register the name of a deceased celebrity must always or necessarily be objectionable on the ground of bad faith. The issues raised by that objection are fact sensitive and case specific.