In a recent decision of the UK's Intellectual Property Enterprise Court ("IPEC") Claridge’s Hotel Limited ("Claridge's"), the owner of the famous luxury London hotel Claridge’s, successfully argued trade mark infringement and passing off against a small company, Claridge Candles Limited ("Claridge Candles") owned by a woman who lived in Claridge Court in Kent. Claridge's sued both the company and the woman personally (they are collectively referred to as the "defendant" in this article). However, in the process, one of Claridge's trade marks was revoked entirely and another pared back. The case is both an important confirmation of the strength of the rights associated with famous names and also a stark warning for trade mark owners who do not use (or continue to use) their registrations for all of the goods and services for which they are registered.

Claridge Candles had manufactured and sold candles with a ‘Claridge’ logo since September 2018 (see image above). The defendant maintained that she had named her company after the street she lived on in Kent, Claridge Court, and that she had never thought of the well-known hotel in Mayfair. This was not challenged by Claridge's, but it nonetheless brought proceedings against the defendant for infringing two of its UK registered trade marks for the word "CLARIDGES" under s. 10(2) and s. 10(3) of the Trade Marks Act 1994 (further details in table below), as well as a passing off claim. In turn, the defendant counterclaimed for revocation of the marks for non-use as both were over five years old (and therefore potentially vulnerable to attack for non-use). Successful rebuttal of this claim required Claridge's to prove that it had made genuine use of the two registrations in the five years preceding the infringement action.

Claimant's grounds for infringement action

Particulars of claimant's claim

Infringement of s.10(2) Trade Marks Act 1994

"A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a)the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b)the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."

The claimant contended that the defendant's use of the "CLARIDGE" sign created a likelihood of confusion due to the similarity to the claimant's marks and the similarity of goods and services offered. It claimed the likelihood of confusion was increased by the enhanced distinctive character it had acquired through prolonged and substantial use.

Infringement of s.10(3) Trade Marks Act 1994

"A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services, a sign which - is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

The Claimant claimed that its marks had a reputation due to their extensive use and promotion and that there was clear similarity with the defendant's "CLARIDGE" sign. The claimant maintained that the defendant was free-riding on the claimant's reputation, diluting the exclusivity and attraction of its marks and causing it to suffer loss of sales and damage to goodwill.

THE IPEC DECISION
The defendant's counterclaim prompted Claridge's to surrender its registration for the word "CLARIDGES" voluntarily for goods such as domestic utensils, tableware, glassware, vases, candle holders on the basis it had not been used in respect of such goods. However, in relation to the other registration ("526 Mark"), Claridge's submitted evidence focusing on its use in Classes 3 and 5, including evidence of the hotel giving guests complimentary candles. The Court decided that the gifting of candles to guests was not a genuine use of the 526 Mark since it was not carried out to create or maintain a market for toiletries. Consequently, the defendant’s counterclaim in respect of goods in Classes 3 and 5 succeeded, and the registration for the 526 Mark was amended to remove these classes from the specification. The Court also pared back the specifications for the claimant’s 526 Mark in the remaining Classes (16, 35, 43 and 44) on the basis that the evidence failed to show that genuine use had been made in respect of the goods and services concerned. The table below highlights the Court's amendments made to the 526 Mark.

BEFORE

AFTER

Class 16: "Printed publications; magazines"

Class 16: "Printed publications; books"

Class 35: "Retail services connected with the sale of food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements; online electronic retail services connected with the sale of food and foodstuffs, drinks (alcoholic and non-alcoholic); business management of hotels; business management of health clubs and spas; provision of business facilities and services"

Class 35: "Retail services connected with the sale of food and foodstuffs, non-alcoholic drinks, and aged Negroni, online electronic retail services connected with the sale of food and foodstuffs, non-alcoholic drinks, and aged Negroni; provision of business facilities and services"

Class 43: "Hotel, restaurant, cafe and bar services; arranging and booking hotels and accommodation services; accommodation reservation services; provision of facilities for meetings, functions, conferences and conventions; catering services"

Class 43: "Hotel, restaurant, cafe and bar services; provision of facilities for meetings, functions, conferences and conventions; catering services"

Class 44: "Provision of beauty treatments and therapies; pedicure and manicure services; depilatory services; cosmetic services; health spa services; massage services; flower arranging services"

Class 44: "Provision of beauty treatments and therapies; pedicure and manicure services; depilatory services; cosmetic services; health spa services; massage services"

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

The IPEC’s amendments to the 526 Mark specifications in response the counterclaim meant that the claimant’s claim for trade mark infringement under s.10(2) of the Trade Marks Act 1994 fell away (because the registrations no longer related to the goods in question), leaving only a claim under under s.10(3).

The Court found the threshold for bringing a claim under s.10(3) was easily met as the mark "CLARIDGE’S had a “very substantial reputation" and an image of “luxury, glamour, elegance and exclusivity”. Going on to consider the s.10(3) infringement criteria set out in the case of Comic Enterprise Limited v Twentieth Century Fox Corporation [2016] EWCA Civ 41 and [2016] EWCA Civ 455, the Court held that the defendant’s use of "CLARIDGE" did, in fact, give rise to;

  1. a link with the claimant’s luxury hotel - this was due to the similarity of brand names, the fact that both are sold as luxury offerings and also the “high strength” of the "CLARIDGE'S" trade mark, which together were likely to cause confusion; and
  2. injury because it took "unfair advantage" of the hotel's reputation for luxury and glamour and enabled it to charge higher prices.

Additionally, the Court ruled that the defendant’s use of ‘CLARIDGE’ was likely to lead the public to believe that the goods in question were connected in trade and the claimant therefore succeeded in its passing off claim.

CONCLUSION
The ruling serves as reminder of the principle of "use or lose it" in relation to registered trade marks. Notwithstanding the strong reputation of Claridge's and its consequent success in the case, it came at a price with the loss of a significant part of its registered rights. To avoid this happening to other owners, it is advisable that they periodically review their trade mark rights (particularly those that have been registered for five years or longer) and the use they make of them to ensure that they do not fall foul of a non-use counterattack. In doing so, particular attention needs to be given to the evidentiary requirements to prove genuine use.