IP Cases & Articles

Importance of TM clearance searches at brand launch

A recent High Court case has underlined the importance of conducting full clearance searches prior to launching or registering a brand, and the difficulties when two businesses trade under similar names in different locations.

Background

The Titanic Spa (TS) opened as a luxury spa with accommodation in Huddersfield in 2005, with current turnover of around £4.8 million. It registered the mark TITANIC SPA in 2011.The Titanic Hotel Liverpool (THL) opened in 2014 with a spa offering services originally known as T-Spa; then The Spa; then (from 2016) Maya Blue Spa. The hotel licenses the TITANIC mark from Titanic Belfast (TB), the company behind the Titanic Quarter in Belfast and owner of two trade marks for TITANIC QUARTER filed in 1999 (UK) and 2003 (European Union Trade Mark - EUTM).

TS objected to THL's use of TITANIC; successfully revoked TB's UK mark for non-use; and commenced a claim against THL for infringement/passing off. In July 2016, TB and THL started proceedings against TS for infringing its earlier marks. All claims were heard together.

Revocation action

The court granted an appeal against the revocation of TB's mark, admitting late-filed evidence because it would enable the TITANIC QUARTER mark to survive. Although only given the evidence on the day of the hearing, the Hearing Officer had had the opportunity to consider it. In deciding to refuse it, the Hearing Officer had only considered the prejudice this may cause to TS if she had accepted it (not the harm done to TB by not allowing it). Allowing the evidence would not have required an adjournment and it had been clearly presented and easy to follow. The TITANIC QUARTER mark was restored to the register.

Infringement claim

As regards TS's infringement claim, the court held that the addition of SPA to the TITANIC SPA mark was not negligible, and that it was a composite mark. However, there was conceptual similarity between TITANIC SPA and TITANIC HOTEL, and consumers might believe that there was a commercial link. Because the TITANIC HOTEL/TITANIC LIVERPOOL marks were used for identical/highly similar services, they infringed the TITANIC SPA mark.

THL was unable to rely on the own name defence. Following the Cipriani case (see www.dyoung.com/trademarknewsle... ), the court held that inter alia:

  • TB had built up a strong reputation in the TITANIC QUARTER mark which predated TS's trade mark. However, TS's trade mark pre-dated THL's use.
  • TS's primary business offering was a spa with hotel facilities; THL was a hotel with a spa – however, the similarity of services was clear.
  • THL had taken steps to minimise confusion (eg, rebranding to T-Spa, then Maya Blue), but there was still evidence of confusion.
  • THL had offered to put a disclaimer on its website with a link to TS's website, and remove all references to 'spa' (using 'health and fitness centre' instead).
  • TB had been aware of TS's mark from 2011.

Ruling – own name defence

Although not an easy decision, the court held that the own name defence should not succeed, because there was evidence of confusion, and because steps taken to minimize this had been made relatively late. However, if THL added a disclaimer to its website (including a link to TS's website) and stopped using the word 'spa', the own name defence would succeed going forwards.

Ruling – trade mark infringement

Did TS's use infringe TB's TITANIC QUARTER marks? The court held that TITANIC SPA and TITANIC QUARTER were both composite marks and noted that although there was some similarity as regards TITANIC, the overall meanings were different (spa facilities v geographical area).

Ruling – passing off

As regards passing off, TS had acquired goodwill in its mark for spa services / accommodation but not in the name TITANIC alone. Before the rebrand to Maya Blue, there was a misrepresentation by THL, which was more than mere confusion, and damage to TS's goodwill could follow (eg, from customers frustrated that they had made a reservation at the wrong place). If THL took steps to benefit from the own name defence going forwards, it would also avoid passing off.

In short

The case highlights the importance of trade mark searches prior to using a trade mark. Also, the difficulty of submitting late evidence in revocation proceedings. Although not insurmountable, every effort should be made to meet official deadlines, particularly where – as here – relevant evidence may be pivotal to the end result of a dispute.

Case details at a glance

Jurisdiction: England and Wales
Decision level: High Court (Chancery Division)
Parties: Property Renaissance Limited T/A Titanic Spa v Stanley Dock Hotel Limited T/A Titanic Hotel Liverpool, Stanley Dock Properties Limited T/A Titanic Hotel Liverpool and Titanic Trademark Limited and Titanic Quarter Limited
Date: 02 December 2016
Citation: [2016] EWHC 3103 (Ch)
Full decision: http://dycip.com/ewhctitanic

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