Earth Wind & Fire is the name of a music band founded in 1965 by the drummer Maurice White. Since 1975 that formation has celebrated worldwide successes and earned Grammys and gold- and platinum albums. The band became famous also in Austria and was famous at the time of priority (2003) of the attacked trade mark. It was from 1977 onwards in the Austrian charts, also at the time of priority. This was so irrespective of whether Maurice White played with his band at that time.
Al McKay joined that formation as guitarist later in 1973 and left it in 1981. He formed a band The Earth Wind & Fire Experience featuring the Al McKay Allstars, whose name was registered as a trade mark in Austria with priority of 2003. This band made hundreds of concerts worldwide and also in Austria between 2004 and 2007. But in the media and its advertisements this formation was named Earth Wind & Fire without any additions. The defendant purported that it had registered this name as a trade mark to fight off tribute bands. It added the other words in order to differentiate itself from the original band and to emphasise that the key role is played by Al McKay with his experience in the original band.
Maurice White sued on different grounds, among them bad faith. The courts confirmed that the registration was made in bad faith. As a basis it was confirmed that Earth Wind & Fire is and was a famous trade mark in Austria and that the defendant had known this fact when filing its mark. Whether Al McKay might be himself famous is of no interest to this case. The fact that Al McKay was a member of the original formation does not justify an infringement in the rights of Maurice White with the aim to profit from its fame. It has apparently accepted a confusion with the famous mark.
Confusion is given when the earlier mark is fully contained in the latter mark as a separate entity. The services protected are anyway identical. Bad faith – the aim to profit from the fame of the earlier mark – need not to be the only reason for adopting the younger mark. There may exist other reasons besides it such as fighting off other pirates or protection of one’s own interests. But that does not mitigate the abuse done by bad faith.