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IP Cases & Commentary – Details

02 May 2013

English High Court Allows ‘Use of Own Name’ Defence - Stichting BDO & Others v BDO Unibank Inc & Others

Tamsin Holman

The Claimants are part of a network of accountancy and professional services firms who trade under the name ‘BDO’. The First Claimant is the proprietor of Community Trade Mark No. 2 419 778 for the letter combination BDO, registered in respect of a variety of goods and services in classes 9, 16, 35, 36, 41 and 42, which it licenses to other members of the Claimants’ group. The First Defendant (‘Unibank’) is the leading bank in the Philippines which, although it does not trade directly in the UK, has commercial relationships with a number of third party remittance providers who do, including the Second to Fifth Defendants. Such services, which are provided in the UK under the name ‘BDO Remit’, enable workers from the Philippines to transfer a proportion of their UK earnings to their home country. There was no dispute that Unibank would be jointly liable for any infringements committed by the other Defendants. Unibank itself uses the name ‘BDO’, and had done so in a number of advertisements for investment banking and wealth management services in various publications which circulate in the European Union.

The evidence was that the First Defendant had used the name ‘Banco De Oro’ since the late 1970’s, and the acronym ‘BDO’ since the mid-1990’s. In turn, some members of the Claimants’ network had used the name ‘Binder Dijker Otte & Co’ since the early 1970’s and, in 1988, the member firms all adopted the acronym ‘BDO’ as part of their names. By 2010, the Claimants’ group had adopted consistent global branding, with all member firms in 110 countries having changed their name to just ‘BDO’. The English proceedings were part of an international dispute between the Claimants and Unibank in relation to the ‘BDO’ name.

There were two distinct limbs to the Claimants’ infringement case:

1. The use by the Second to Fifth Defendants of the sign ‘BDO Remit’ in relation to remittance services in the UK.

2. The use by Unibank of the sign ‘BDO’ in its advertisements in publications circulated in the European Union.

The Defendants denied infringement and counterclaimed for a declaration that the CTM was partially invalid, alternatively should be partially revoked. These counterclaims were dropped prior to judgment.

First Limb

The claims in relation to the use of the sign ‘BDO Remit’ were based on Article 9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation (CTMR).

In assessing the claim under Article 9(1)(b), the Court conducted a comparison of the CTM with the sign ‘BDO Remit’, and between the relevant services covered by the CTM specification and the remittance services being supplied by the Defendants. The Court held that there was a high degree of similarity between ‘BDO’ and ‘BDO Remit’, but that there was a low degree of similarity between the Defendants’ remittance services and the relevant registered services. Taking all of the relevant factors into account, the Court concluded that there was no likelihood of confusion on the part of the average consumer and, accordingly, the claim for infringement under Article 9(1)(b) failed.

The Article 9(1)(c) claim was based on ‘dilution’, in respect of which the Court followed the guidance of the CJEU in Intel Corp Inc v CPM UK Ltd. The Defendants accepted that the ‘BDO’ trade mark had acquired an enhanced distinctive character through use (as at the relevant dates) in relation to accountancy, audit and tax services, but not otherwise. The Court held that the evidence did not establish that the mark had a reputation in relation to any other services in the relevant period and, even if it did, that this would not have affected the outcome. Although the Court was satisfied that use of the sign ‘BDO Remit’ would give rise to a link in the mind of the average consumer, and that the uniqueness of the mark in the financial services sector could be undermined, it did not follow that the distinctive character of the trade mark had been reduced. In particular, the Court noted that despite the Defendants having used ‘BDO Remit’ since 2004, there was no evidence that such use had weakened the ability of the trade mark to identify the services in relation to which it is used as coming from the Claimants. Accordingly, the ‘dilution’ claim under Article 9(1)(c) CTMR did not succeed.

Second Limb

The claim against Unibank, in relation to some 20 different advertisements, was based on Article 9(1)(a) CTMR - a so-called ‘double identity’ claim. Since the First Defendant did not itself provide its services in the EU, the first question for the Court was whether the use of the sign ‘BDO’ in the advertisements amounted to use of the sign in the EU at all. Applying the principles of L’Oréal SA v eBay International AG (amongst other CJEU decisions), from which the key issue was whether or not the advertisements were targeted at consumers in the EU, the Court held that for some of the advertisements, but not all, there was use of the sign in the EU. Considering each advertisement in turn, the Court found that 3 out of the 20 were prima facie infringements within Article 9(1)(a) CTMR, subject to the ‘use of own name’ defence raised by Unibank pursuant to Article 12(a) CTMR.

In the 2010 decision of the English Court of Appeal in Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd, it was held that the ‘use of own name’ defence was potentially available in respect of a trading name, as well as a corporate name, of a company. To fall within Article 12(a) CTMR, such use must be in accordance with honest practices. In assessing whether or not Unibank’s use met this requirement, the Court considered the list of relevant factors set out in the 2011 High Court decision in Samuel Smith Old Brewery v Philip Lee (t/a ‘Cropton Brewery’), including: whether they knew of the existence of the trade mark, whether they took legal advice in relation to their use of the sign, whether they appreciated that the trade mark owner would likely object, whether there was a likelihood of confusion, and so on. Taking all the circumstances of the case into account, including the fact that Unibank had used the name ‘BDO’ for many years, the Court concluded that it did have a justification for using the sign ‘BDO’ and, accordingly, the defence under Article 12(a) succeeded.


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