Introduction
Facts
Enhanced distinctive character and/or reputation
Infringement under Section 10(3)
Counterclaim for revocation of claimant's trademarks
Passing off and liability of second defendant
Comment
For many of us, the name Claridge's brings to mind one of the most luxurious of luxury hotels in London – complete with afternoon teas and fine dining – rather than court rooms and trade mark law. Trading since 1856 under the name CLARIDGE'S, the hotel is unlikely to have foreseen its recent dispute with a company in Kent and its sole owner and director, who has sold candles and reed diffusers under the name CLARIDGE since September 2018.
The hotel (the Claimant) applied for two UK trade marks in 2003 (738 Mark) and 2005 (526 Mark) for the word mark "CLARIDGE'S" covering a wide variety of goods and services in classes 3, 5, 16, 35, 43 and 44, including:
- toiletries
- bath preparations
- body lotions
- retail services connected with the sale of food and foodstuffs
- hotel, restaurant, café and bar services
- health spa services.
Ms Shepherd, the Second Defendant, applied for a UK trade mark for the work mark "CLARIDGE" in 2018 for goods in classes 3 and 4 (including reed diffusers, potpourri, various hair and body products and fragranced candles). This was opposed by the Claimant. The Defendant counterclaimed for revocation of the hotel's marks.
The case explored a wide range of issues, including:
- assessing infringement under s.10(2) and s.10(3) of the Trade Marks Act 1994
- acts of passing off
- whether the Claimant's mark has enhanced distinctive character and/or reputation in the UK relating to any of the goods or services,
- the liability of the Second Defendant
- whether the Claimant's mark had been put to genuine use in the UK.
Enhanced distinctive character and/or reputation
The Judge began his assessment by considering the 526 Mark's reputation and distinctive character. He was satisfied that the mark had a substantial reputation in the UK in relation to hotel services. Reputation was also found for beauty treatment and spa services (class 43 services) and for retail services (class 35).
Infringement under Section 10(3)
The marks were held to be visually and aurally identical. The Claimant presented evidence to establish the significant reputation of the Claridge's Hotel brand to demonstrate that the mark was known. This was accepted.
The question was if Claridge's Hotel has a substantial reputation in the UK and if this resulted in the Defendant receiving an unfair commercial advantage from the asserted connection to the Claridge's Hotel brand and reputation.
The Court reviewed the criteria for infringement as in Comic Enterprises v 20th Century Fox outlining the issues as:
- whether use gives rise to a link between the two
- whether the Defendant's use gives rise to any of either dilution, tarnishment, or unfair advantage.
The Judge linked the Defendant's sign and the Claimant's mark, noting the similarity in the signs, the average consumer of both parties (both targeting premium consumers) and the degree of the mark's distinctive character, establishing the likelihood for confusion between the two.
It was argued that as Claridge's is a globally recognised hotel brand, the Defendant was able to take advantage of "its reputation for luxury, glamour, elegance, and exclusivity", undoubtedy enabling the Defendant to charge higher prices and/or sell more of their products to consumers, which amounted to an unfair commercial advantage.
It was found that there is a likelihood of confusion between the marks and the Defendant was infringing the Claimant's 526 Mark pursuant to s10(3).
Counterclaim for revocation of claimant's trademarks
The counterclaim was more contentious.
On the decision of whether the Claimant put its 526 Mark to genuine use in the UK, the Judge found that the Claimant did not prove genuine use on all goods covered by the registration. This included toiletries etc in classes 3 and 5, since the large volumes of shampoo and conditioner (and similar products) were room toiletries that are a part of the luxury hotel customer experience.
Arguments such as the fact that use had changed over time were rejected. Given this, the counterclaim succeeded, and the Judge revoked the mark relating to various products and classes. As a result of the decision for the counterclaim, the argument for infringement under s10(2) failed.
Passing off and liability of second defendant
Passing off succeeded due to the likelihood that the Defendant could mislead the public, establishing a connection or association between the Claimant and the Defendant, considering the fact that both parties are preminum offerings, the strength of the Claimant's mark's reputation and the degree of distinctive character.
The Second Defendant was the only employee/director/company secretary and owned and controlled more than 75% of the issued share capital of the First Defendant. She was therefore found to be personally liable for the acts complained of.
This case serves as a stark reminder that searches must be completed prior to launching a new brand or product name. Although Claridge's Hotel did not claim the Defendant purposefully copied the name for reputational advantage, this was irrelevant.
The Defendant claimed the name came from the home address of the Second Defendant and so a seemingly honest mistake led to an enormous cost for the Defendant.
Claridge's also voluntarily surrendered one of its marks and partially surrendered another mark. Certain goods and services were also revoked from the 526 Mark. This was mainly due to the marks being vulnerable for non-use.
When considering which marks to rely on, the issue of non-use for marks that are older than 5 years should always be a serious consideration
Case Ref: [2019] EWHC 2003
For further information on this topic please contact Christopher Benson at Taylor Wessing by telephone (+44 20 7300 7000) or email ([email protected]). The Taylor Wessing website can be accessed at ?www.taylorwessing.com.
This article has been reproduced in its original format from Lexology – www.Lexology.com.
