Dorothea Thompson on trade mark tensions over THE SMITHS name and brand, with some wider TM considerations

We are pleased to share Partner Dorothea Thompson’s article for Complete Music Update (CMU) discussing a recent public tussle between Morrissey and Johnny Marr tussle over THE SMITHS name and trade mark, with the addition of some wider / ongoing TM considerations and best practice for artists and their teams. The op-ed was published on 23^rd October 2024 and can be read in full here.

‘In a recent website post, former The Smiths frontman Morrissey claimed that ex-bandmate Johnny Marr had registered THE SMITHS as a trademark – “without any consultation to Morrissey, and without allowing Morrissey the standard opportunity of ‘objection’”.  He also claimed that the registration meant Marr could (amongst other things) tour “as The Smiths using the vocalist of his choice”.

Marr responded that Morrissey’s claims were “incorrect” and stated that the application arose in response to a third-party trying to use The Smiths’ name – which led to the “discovery that the trade mark was not owned by the band”.  Marr says he reached out to Morrisey’s representatives to work together to protect the name but did not receive a response.  In an apparent further twist, Morrissey published a one-line announcement that he has since “severed all connections” with his managers at Red Light / Pete Galli Management.

This recent Morrissey/Marr tussle may come as little surprise to their fans or the wider music industry.  Nevertheless, it serves as a pertinent reminder that artists should keep branding and trademarks on the agenda – particularly those operating as a group.

Many have questioned whether THE SMITHS should have been registered as a trademark some time ago (and before 2018 when the application was actually filed). That would certainly have been advisable – and the process should have fully considered who would own and control the mark, who would be entitled to use it and how.  For some artists, however, those questions take time to work through. In the meantime, to monitor the position Marr and/or Morrissey could have setup one or more trademark “watches” to alert them if anyone tried to register the name (or similar).

One key point is that trademark registration in most countries operates on a “first to file” basis. In most territories, registries do not assess whether the person applying is entitled to own that mark or is the first one to use it. Rather, they leave it for others to object (by way of “opposition”) if they think they have the right to do so. If no one objects within the fixed opposition period, the registration is granted.

Morrissey suggested that he wasn’t given the opportunity to oppose Marr’s application. Marr claims he reached out to his former bandmate. However, neither Marr nor the UK registry were required under trademark law to tell Morrissey about the application or notify him when it was open to objection. If an artist wants to be notified of an application for a particular mark (so that they can potentially object) they should setup their own trademark “watches”.

Watch services operate outside of the trademark registries – they are offered by independent providers who usually charge a one-off setup cost plus annual fees (a few hundred pounds for worldwide, depending on the scope). The service then notifies you of relevant applications as soon as they’re filed. This can provide a heads-up months before the official opposition period so you can decide early on if it’s worth fighting or trying to agree a coexistence arrangement.  Where required, watches can also cover registered company names, domain names and monitoring of marketplaces, social media, and other channels.

Watch services should be part of regular good housekeeping; but they can be particularly important where a project has launched and is being actively marketed but trademark applications may not be filed until later. In those circumstances it is prudent to keep an eye out for third-party applications which may affect your ability to register your mark as intended.

To oppose a conflicting application, the process itself is fairly straightforward and costs can be managed at each stage. In the UK, the official fee (paid to the UKIPO) is £100-200, and the initial filing is a simple form (whereas later stages may require evidence).

Often an early approach to the other side to discuss settlement, which may require the applicant to withdraw their application and/or stop using the mark altogether, coupled with filing an opposition (which requires the applicant to engage in formal proceedings) can be extremely effective. Another aspect of best practice is to regularly review the branding and trademark position and consider whether you should be filing new applications and if so, what the scope should be.

Sadly, it is not uncommon for ex-group members, ex-managers or others to try to register band names and logos – which they may not be entitled to, in many cases for leverage in wider settlement discussions. It is therefore crucial to put in place a robust trademark protection strategy early on, including watches, applications and formal agreement around ownership and use (in a ‘Band Agreement’ or otherwise). Of course, matters can be tidied up later on – but it is far less painful (and more cost-effective) to be pro-active.

Trademarks may fall low down on the to-do list for most creatives, but it is in their best interest for managers, lawyers, accountants and other team members to keep these matters under review – as demonstrated by this latest Morrissey / Marr spat.’