Earlier this month, the iconic Swedish band ABBA sued a British tribute band, ABBA MANIA, for trade mark infringement in a New York court Abba is trying to prevent the tribute band from using the name “ABBA”.
Knowing Me, Knowing You
ABBA’s argument is that the tribute band is intentionally misleading fans into believing that it is endorsed by ABBA. The tribute band includes terms like ‘official’ and ‘original’ on its website and in its marketing materials, and ABBA’s concern is that fans will not necessarily know that the tribute band in fact has no official connection to the original group.
The website of the tribute band does, however, state that “Abba Mania is in no way associated, affiliated, or endorsed by Polar Music or ABBA”. However, this appears in small capital letters, and fans and ticket buyers are arguably likely to miss that little message, and instead are arguably likely to be impacted by “The Original Tribute From London’s West End!” which appears in large letters on the main webpage.
ABBA had previously raised the alarm and asked the tribute band to use “ABBA Tribute” instead of “ABBA MANIA” and to stop using the abbamania.com website, and Abba Mania on social media and YouTube. These requests were ignored.
Money, Money, Money
ABBA has sold an estimated 385 million records since the group was founded in Stockholm in 1972. The lawsuit, which accuses the tribute band of trading off of ABBA’s goodwill, and describes the tribute band as “parasitic”, is seeking a variety of remedies (including financial compensation).
The Winner Takes It All
The tribute band is already fairly well-established. Its website indicates that the professional production was created in 1999 and played its first shows in 2000. In other words, ABBA MANIA has a lot to lose. If the lawsuit is successful, ABBA could amongst other things claim the profits attributable to the unlawful use of the “ABBA” trade mark.
There are a few points to take away from this saga:
First, do research. If you are planning to sell/supply a product/service that has some connection to an existing product/service (e.g. a look-alike product, a complementary services, a tribute band!) investigate the IP position with a specialist IP lawyer first. In other words, find out if the owner of the original product/service has registered and/or unregistered rights (e.g. trade mark rights, passing off rights, copyright etc.).
Second, consider the risk. If there are prior rights out there, consider whether the product/service that you are intending to sell/supply is likely to infringe those rights (e.g. Are you using an identical copy of the earlier name/logo/material? Are you using language that might mislead consumers e.g. authentic, original or official? How deep are the pockets of the owner of the prior rights? Do they have a history of pursing IP infringement and how likely is it that they will pursue you?).
Third, consider options and strategies. In some cases, the prior rights may have expired or may be about to expire (e.g. patents, design rights and copyright all expire eventually). Registered trade marks should not expire, as long as the ongoing maintenance requirements are complied with (e.g. the payment of renewal fees and, in some territories, the provision of a declaration and evidence of use at regular intervals). However, unregistered trade mark rights (i.e. ‘goodwill’ within the meaning of the English law of passing off) can fade over time if trade/use has ceased for a significant period of time. In some cases, there may be defences (e.g. acquiescence, delay, honest concurrent use, fair use/dealing etc.) and in some cases it may be possible to acquire rights (e.g. by buying a registered or unregistered rights or by taking a licence).
Fourth, don’t ignore complaints. Whether or not you have done your research, and whether or not you have considered options/strategies before proceeding with your business/product/service/plan, pay attention when someone complains (in particular, if a constructive solution is offered – as in this case, where ABBA proposed that ABBA MANIA could change its name to ABBA Tribute). It is almost always quicker/cheaper/easier to resolve matters without recourse to litigation if possible, even if it means compromise on by one/both parties. In this case, it remains to be seen how much time/money/energy will be lost by both parties before this matter is resolved …
Briffa are experts in intellectual property law and practice. If you would like a free consultation to discuss your business or idea, and how we can help, please contact us on 020 7288 6003 or email@example.com.
Written by Éamon Chawke, Partner
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