GMG Radio Holdings v Tokyo Project Ltd
Reference:  EWHC 2188 (Ch);  FSR 15; (2006) 29(1) IPD 29002
Court: Chancery Division
Judge: Kitchin J
Date of judgment: 14 Oct 2005
Summary: Passing off - Confusion - Artwork - Get-up - Injunction - Serious issue for trial - Balance of justice - Damages adequate remedy
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Instructing Solicitors: Davenport Lyons for GMG; Jayes & Page for the Defendants.
GMG had operated a music business under the trade mark “Hed Kandi” since the late 1990’s. As part of this business GMG released compilation albums of dance music, each featuring the Hed Kandi mark and also featuring women drawn in a particular ‘pop art’ style by the artist Jason Brooks. These had been very successful. A Mr Doyle, who had been instrumental in the success of the Hed Kandi brand, left the Claimant company to set up the Defendant company, announcing that he was taking Mr Brooks and his distinctive artwork with him. The Defendants’ website, promotional material and proposed first album cover featured pictures of stylized women drawn by Mr Brooks. GMG sought an interim injunction preventing use of this artwork.
(1) Whether there was a serious issue for trial;
(2) Whether the broader balance of justice considerations favoured the grant or refusal of the injunction.
(1) In light of statements by Doyle and Brooks as to the importance of the artwork and a survey showing confusion GMG had done enough to establish an issue to be tried. However, they would have considerable difficulty making good their claim at trial. They did not rely on a particular get-up but rather upon the general style of the artwork appearing on their albums, which was difficult to properly define. The artwork of which they complained was not the same as any of their albums, and prominently bore the Defendants’ brand name. In relation to the other material complained of, there was no suggestion of any actual confusion, and GMG only just established an arguable case.
(2) Refusal of the injunction would cause the least injustice. If an injunction was refused, damages would not adequately compensate GMG, but neither would damages be an adequate remedy for the Defendants. Delaying release of the CD meant it would have to be abandoned, which would be catastrophic for them.
This case is unusual in that the get-up relied upon by the Claimants could not be identified with any certainty, but was rather the common elements from the packaging of a number of individual products. The judge expressed the view that the Claimants would have considerable difficulty in making good their claim in passing off at trial. Nevertheless, the hurdle of ‘a serious issue to be tried’ is a low one, and the Claimants passed it. The injunction was nevertheless refused because of the grave consequences for the Defendants of having to delay the release of their album, which contained recordings that were currently popular and intended for the Christmas market.