OHIM Cancellation Division, December 4, 2009
The original members of the boys band “New Kids on the Block” have successfully requested invalidity before the OHIM of the Community trademark NEW KIDS ON THE BLOCK filed by SM Production Partneship. Their request was based on the bad faith of the CTM owner at the time of filling and claimed that registration was obtained in the name of an agent and in breach of the earlier unregistered rights of the original band.
Historically, the band signed an exclusive production agreement with Big Step Production which was owned by Maurice Starr (for 60%) and by Richard Scott (for 40%). This company was in charge of the band commercial affairs such as the arrangement and promotion of concerts, negotiation of merchandising licenses and gained protection through registrations of the band name and logo. Big Step Production terminated its contract when the band broke in 1992. The recordings and merchandising licenses set up were allowed to continue with Richard Scott as a perpetual receiver of Licenses revenue. Big Step Production however assigned to the individual band members all the rights to the band name and logo. The CTM owner involved in the cancellation proceeding resulted of a partnership set up between Richard Scott (who owned 40% of Big Step Production above) and Denny Marte.
The CTM owner was regarded as necessarily realizing that there was still valid intellectual property rights connected to the band’s name and as having acted in bad faith. He knew of the earlier sign by his relation with the applicants to the cancellation claim. At the time of filling of the contested CTM, the band name was evidenced by the applicants to the cancellation claim as enjoying a considerable degree of recognition and a huge economic potential. All these rights and value attached to the band had to remain in the five original members for the OHIM.