With seventies hit singles like Poppa Joe, Blockbuster, Fox on the Run, Ballroom Blitz and Co Co, the British pop band The Sweet was quite a popular one and still is. The Sweet started as Sweetshop in 1968 with Brian Connoly as a singer and Mick Tucker on drums. In the sucess years guitarist Andy Scott and bass player Steve Priest completed the line-up. Today the Presiding Judge of the District Court in The Hague (mr Chr.A.J.F.M. Hensen) came to a decision in a trade mark infringement case (summary proceedings) started by Scott against the Dutch music wholesaler Galaxy Music B.V. Scott has registered The Sweet and Sweet as trade marks on his own name, first in the UK in 2002, followed by a CTM for The Sweet on September 22, 2005 (classes 9, 25 and 41). The history of The Sweet learns that Conolly left the band in 1979 to start a solo career, the other band members continued the band using the band's name till 1982, when the band stopped. In 1986 Turner and Scott reunited but Conolly followed his own direction and build his own version of The Sweet: Brian Conolly and the New Sweet. With a short exception in 1989 the band members kept going their own Sweet bands. Unfortunetaly Conolly died in 1997 (he re-recorded a few hits of The Sweet in 1995), Tucker in 2002. Scott keeps the memory alive and keeps on touring as The Sweet with new band members.
) sells in Europe a box of cd's ('Remember the 70's
') that is described on the website as 'A beautiful 3 cd collection with a good overview of the seventies hits, included amongst other songs from The Sweet (....).'
The cd's include The Sweet' songs Little Willy
, Fox On The Run
which titles are used in the playlist, that is printed on the back of the cd cover, followed by 'The Sweet' between brackets). The songs however are those that Conolly re-recorded in 1995. The cover of the cd's shows a picture of the Sweet with Scott and Conolly in the front.
Scott argued that this use of The Sweet infringed his CTM, because Galaxy used the sign Sweet and The Sweet without his permission in the art work. Scott appealed to art. 9 par 1 a, b and c CTMR.
Galaxy respondend that she could use the recordings using the signs Sweet and The Sweet as well. The recordings were made by Brian Conolly in his 1995 line-up of The Sweet. Galaxy challegend that because of Scott's trade mark registration in 2005 the signs Sweet or The Sweet could not be used anymore for recordings of a band called The Sweet. Galaxy referred to art. 12 sub b CTMR that lays down that a trade mark owner can not oppose the use by a third party in the course of trade of indications concerning characteristics of the goods or services.
The Presiding Judge establishes first of all that Galaxy did not refer to copyright. Thus the Presiding Judge concludes that there seemed to be no obstacle for Galaxy to include the Conolly versions of The Sweet songs in the compilation. This compilation - so the Presiding Judge - continued his deliberations includes 48 songs, 3 of which are connected somehow to The Sweet. The signs Sweet or The Sweet are used 15 times in the artwork. Other signs, that refer to other bands, are used over 200 times. Furthermore a few hundred other signs in the art work refer to the song titles that are included in the compilation.
For the time being (summary proceedings) the Presiding Judge - who qualifies the use of Sweet and The Sweet as frequent - decides that this use is not to regarded as trade mark use according to art. 9 CTMR. The box of cd's is not offered to the public using the trade mark. Furthermore the use of the signs Sweet and The Sweet should be regarded as an indication for the three songs of The Sweet that are included in the compilation. Such use is covered by the exception of art. 12 CTMR. Another view would be contrary to art. 25 par. 1 of the Dutch Copyright Act according to which an author has a right to be named in any publication of his work.
The trade mark claims where dismissed on these grounds. Scott's other claims (infringement of his portrait right with regard to the picture of The Sweet used in the artwork and unlawful deceptive advertising because of the false impression that the included songs were not the original ones) were dismissed too.