Music has influenced fashion for decades. When we think of musical eras and icons such as Frank Sinatra, Madonna, and Snoop Dogg, we picture their particular aesthetic and, as fans, we want to dress just like them. But at what point does inspiration cross the line into bad faith?
Rock and roll icons, the Rolling Stones (under their company Musidor B.V.), have prevented trade mark registration of the Australian fashion label, JAGGER & STONE.
JAGGER & STONE is the brand of We the Wild Ones Pty Ltd, an Australian designer, manufacturer and retailer of clothing and accessories. On 19 March 2018, We the Wild Ones applied to register the following trade mark in Class 25 for a variety of clothing and apparel:
The Rolling Stones own trade mark registrations in Australia for “ROLLING STONES” and “MICK JAGGER” for a wide range of goods and services, including clothing.
The Rolling Stones opposed registration of the JAGGER & STONE mark on the following grounds:
- The JAGGER & STONE mark is identical or very similar to another registered trade mark in Australia – s44;
- The use of the JAGGER & STONE mark would be contrary to law and, in particular, would constitute passing off and/or misleading or deceptive conduct – s42(b);
- Because of a connotation that the JAGGER & STONE mark has, its use would be likely to deceive or cause confusion – s43;
- The JAGGER & STONE mark is similar to a trade mark which has acquired a reputation in Australia – s60; and
- The application to register JAGGER & STONE was made in bad faith – s62A.
In her decision, the Delegate only considered the ground of bad faith.
The Rolling Stones argued that the trade mark application was designed to acquire a springboard or advantage by exploiting the reputation of Mick Jagger and the Rolling Stones. It was submitted that the reputation of Mick Jagger and the Rolling Stones in Australia is such that the word “Jagger” immediately conjures thoughts of Mick Jagger, the lead singer of the Rolling Stones – frequently referred to as ‘the Stones’.
We the Wild Ones did not deny being aware of Mick Jagger and the Rolling Stones, but co-director, Lucy Jackson, provided the following explanation for the choice of brand:
“The choice of the words ‘Jagger’ and ‘Stone’ were derived from the definitions of each word and their resemblance to the directors of the business… I am considered the ‘Jagger’. Urban Dictionary defines ‘Jagger’ as “psychotic Demi god that you should not get on [their] bad side…” …Being the aggressive determined half of the duo, this is a word that I am often referred to by friends… Nicki Westcott is considered the ‘Stone’. The reference to ‘Stone’ is more of a symbolic meaning and represents Nikki’s personality and characteristics in being ‘grounded’, ‘stable’, ‘down to earth’, and the ‘rock’ of the business.”
It appears that the Delegate was unconvinced by this explanation, but ultimately it was content that had been published to the Jagger & Stone Instagram account which worked against We the Wild Ones.
The Delegate noted the images published to Instagram featured the JAGGER & STONE trade mark alongside images of models posing with electric guitars, amplifiers and a sign stating, “If the music is too loud, you are too old” (an expression coined by American musician Ted Nugent, not the Rolling Stones). We the Wild Ones provided no explanation as to why they had associated the brand with loud music, bands, electric guitars and amplifiers.
To establish a ground of opposition on the basis of bad faith (s62A), the bad faith must exist at the time the application was filed. However, the Delegate drew inference from the post-filing conduct of We the Wild Ones (the Instagram posts), that they intended to use the trade mark with other iconography to create and benefit from an association with the reputation of Mick Jagger and the Rolling Stones.
Registration of the JAGGER & STONE trade mark was refused.
The take-away for brand owners is to exercise caution when drawing inspiration from artists, and avoid making unauthorised references to, or associations with, the brands and reputation of other traders.