Background

APT Training was the exclusive licensee of the UK and EU word marks RAID for, among others, class 41. It provided psychiatry and mental health training courses and materials using the mark, including to the National Health Service (NHS). RAID was an acronym for "Reinforce Appropriate, Implode Destructive".

Birmingham & Solihull Mental Health NHS Trust (a semi-autonomous organisational unit within the NHS) provided mental health care. In doing so, it developed a model for patient assessment and discharge for individuals experiencing severe mental health crises and trauma who attend at hospitals, including those presenting to accident and emergency. As part of the model, it used the sign 'RAID' as an acronym for 'Rapid Assessment Interface and Discharge'.

APT Training commenced trade mark infringement proceedings on the basis of s.10(1), (2) and (3) of the Trade Marks Act 1994 and Art 9(2)(a),(b) and (c) of the EU Trade Mark Regulation. Infringement turned on a number of issues, including whether Birmingham & Solihull Mental Health NHS Trust’s use of its sign was in the course of trade.

Was the use of the sign RAID in the course of trade?

Birmingham & Solihull Mental Health NHS Trust argued that it was not using its sign "in the course of trade" in relation to education and training services relating to mental health because there was no "commercial activity". It pointed to the fact that it’s primary aim was not profit but rather pursuant to section 43 of the National Health Services Act 2006, which stated that "the principal purpose of an NHS foundation trust is the provision of goods and services for the purposes of the health service in England." It also submitted that it only provided training on an ad hoc basis and internally to those involved in providing its RAID service to patients.

In Arsenal Football Club v Reed the Court of Justice of the European Union (CJEU) held the following use of a sign, no matter how modest, is sufficient to satisfy the requirement for "use in the course of trade" (a) use in the context of commercial activity with a view to economic advantage; (b) and not as a private matter. In the case at hand, the question arose whether use by a charity could be "use in the context of commercial activity with a view to economic advantage"; and whether internal use was "as a private matter".

Use in the context of commercial activity with a view to economic advantage

As to the former, this was addressed in Verein Radetzky-Orden v Bundesvereinigung Karmeradschaft "Feldmarschall Radetzky" (C-422/07) in the context of genuine use. Here the Court of Justice of the European Union held:

"[16] With regard to the question whether a non-profit-making association, carrying on activities such as [these{ may be regarded as making genuine use of a trade mark ...

[17] The fact that a charitable association does not seek to make profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services.

[18] In addition, as the Radetzky-Orden admitted in its written observations submitted to the court, paid welfare services exist. In modern society, various types of non-profit-making associations have sprung up which, at first sight, offer their services free but which, in reality, are financed through subsidies or receive payment in various forms.

[19] It cannot be ruled out, therefore, that trade marks registered by a non-profit-making association may have a raison d'être, in that they protect the association against the possible use in business of identical or similar signs by third persons.

[20] As long as the association in question uses the marks of which it is the proprietor to identify and promote the goods or services for which they were registered, it is making an actual use of them which constitutes "genuine use" ...”

Applying this to the facts, the court held that there was use in the context of commercial activity with a view to economic advantage. It reasoned, inter alia:

• The provision by Birmingham & Solihull Mental Health NHS Trust of its RAID service to the Birmingham Hospitals was for payment, pursuant to a contract, following a commissioning process, subject to service objectives and requirements, and susceptible to termination;
• NHS England and the Clinical Commissioning Groups commissioned services from a variety of providers, including not only the defendant, but also private providers. As such, Birmingham & Solihull Mental Health NHS Trust was competing in a market place;
• Whether Birmingham & Solihull Mental Health NHS Trust primary aim was profit was not decisive.

And not as a private matter.

As to the latter criterion, this was the subject of considerable discussion by the court. In particular, it considered whether “and not as a private matter” was by way of contrast to “use in the context of commercial activity with a view to economic advantage” (and, therefore, added nothing) or was an additional criterion. If the latter, then what was its effect? The court engaged in an extensive review of the case law, addressing among others Och-Ziff Management Europe v Och Capital and Ors and Google France SARL v Louis Vuitton Malletier SA.

Ultimately, however, the court concluded that it did not need to decide the point. Birmingham & Solihull Mental Health NHS Trust only relied on internal use and did not maintain that external use was “as a private matter”. However, on the facts, it failed. The court concluded:

“In relation to the use of [Birmingham & Solihull Mental Health NHS Trust’s sign] in the provision of education services and related materials, namely the RAID Network, I do not understand there to be any real argument that such use is purely internal, either to [Birmingham & Solihull Mental Health NHS Trust] or to [Birmingham & Solihull Mental Health NHS Trust] and the Birmingham Hospitals together. I am satisfied that it is not. The RAID Network is open to membership to anyone, anywhere, working in mental health services who can provide a work email address, and Professor Tadros' evidence is that the membership is drawn widely and nationally from within and outside the NHS.

In relation to use of [Birmingham & Solihull Mental Health NHS Trust’s sign] in the provision of training services and related materials, there is also evidence before me that some of those are publically accessible on the internet. Dr Davies has printed off such materials which he has found by conducting internet searches. That cannot, in my judgment, be considered to be 'internal use', per Verein, which found that communications to the public were genuine use.

I have found that [Birmingham & Solihull Mental Health NHS Trust] uses [its] sign in the provision of training services and related materials to "RAID staff or staff associated or linked to the RAID service" and that this includes "acute hospital staff". Professor Tadros makes this point in both of his witness statements, and such training is also required by the SLA. That training is therefore provided not only to those staff who are involved with [Birmingham & Solihull Mental Health NHS Trust] RAID [s]ervice who are employed by the [d]efendant, but also those that are employed by the Trusts that operate the Birmingham Hospitals.

I do not accept [Birmingham & Solihull Mental Health NHS Trust’s] contention that staff of the five Birmingham Hospitals involved with [its] RAID [s]ervice, who are employed by two different NHS Trusts to [Birmingham & Solihull Mental Health NHS Trust], are 'internal' to [it]. They are not, in my judgment. Each of those trusts (including [Birmingham & Solihull Mental Health NHS Trust]) are separate entities. Their relationship is of service provider and service user pursuant to a commercial contract for economic gain.”