PROPERTY RENAISSANCE LTD (T/A TITANIC SPA) V STANLEY DOCK HOTEL LTD (T/A TITANIC HOTEL LIVERPOOL)

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1 452 [2017] R.P.C. 12 PROPERTY RENAISSANCE LTD (T/A TITANIC SPA) V STANLEY DOCK HOTEL LTD (T/A TITANIC HOTEL LIVERPOOL) CHANCERY DIVISION Henry Carr J.: 3, 4 and 7 November and 2 December 2016 [2016] EWHC 3103 (Ch); [2017] R.P.C. 12 H1 Trade marks Passing off TITANIC SPA TITANIC QUARTER Infringement Validity Revocation Non-use Fair specification Own name defence Injunction Proportionality Declarations Procedure Late evidence in proceedings before the Intellectual Property Office Assessment of materiality Prejudice Admission of further evidence on appeal H2 Trade Marks Act 1994, ss.10(2), 11(2), 46(1)(b), 46(3) Trade Mark Rules 2008, SI 2008/1797, rr. 13(11), 38(8) This report concerns the hearing of an action for infringement of registered trade mark and passing off which had been commenced in the Intellectual Property Enterprise Court ( IPEC ), an appeal to the High Court against a decision of the UKIPO cancelling a potentially conflicting mark in its entirety on grounds of non-use, and a cross-action for infringement of that and another registered trade mark which had been commenced in the High Court, directions having been given that they all be heard together. All of the marks included the word Titanic. H3 The IPEC claim had been commenced in March 2015 by Property Renaissance Ltd ( Titanic Huddersfield ), which had traded under the name Titanic Spa from premises in Huddersfield since By 2015 its annual turnover was 4.8 million and it offered not only spa services but also overnight accommodation in 33 serviced apartments. Titanic Huddersfield was the registered proprietor of UK registered trade mark no. 2,572,423 TITANIC SPA ( the 423 mark ) which was registered in respect of various services in classes 35, 41, 43 and 44 with effect from 16 April The defendants to those proceedings were Stanley Dock Hotel Ltd and Stanley Dock Properties Ltd (together referred to as Titanic Liverpool ), who were the operators of the Titanic Hotel Liverpool. The Titanic Hotel Liverpool had opened in June 2014 and its facilities included a spa which was referred to in initial advertising and publicity materials as the T-Spa and opened in November Following a complaint from Titanic Huddersfield, the spa was rebranded as the Spa from December 2014 and in April 2016 a further name change was effected to Maya Blue Spa. However Titanic Huddersfield maintained its claim, complaining of the use of the word Titanic in the name of the hotel. Titanic Liverpool operated the Titanic Hotel Liverpool under licence from Titanic Trademark Ltd ( TTL ) and Titanic Quarter Ltd ( TQL ). TTL and TQL were companies involved in the redevelopment of an area of Belfast formerly known as Queens Island and which had been renamed Titanic Quarter in what was one of Europe s largest regeneration schemes. TTL and TQL are together referred to in the judgment reported here as Titanic Belfast.

2 [2017] R.P.C H4 H5 H6 H7 The cancellation proceedings before the UKIPO concerned UK registered trade mark no. 2,201,115 TITANIC QUARTER ( the 115 mark ) which was registered in respect of various services in classes 36, 41, 42 and 43 with effect from 24 June The proprietor of the 115 mark was TTL and the cancellation proceedings had been brought by Titanic Huddersfield. The hearing officer had determined that the 115 mark should be revoked in its entirety with effect from 26 July 2008 on grounds of non-use and TTL appealed. In particular, TTL complained of the refusal of the hearing officer to admit certain evidence filed shortly before the hearing. The High Court action had been brought by Titanic Belfast and Titanic Liverpool for infringement of both the 115 mark a device mark including the words TITANIC QUARTER, namely EU registered trade mark no. 3,118,554 ( the 554 mark ), a representation of which appears at [8] of the judgment reported here. The 554 mark was registered for goods and services in classes 16, 36, 37, 41 and 43. The action was brought against Titanic Huddersfield and complaint was made of its use of the name TITANIC SPA. The claim form in the High Court action had been issued in July There were also ongoing revocation proceedings in respect of the 554 mark before the EU IPO, but it was common ground that the action should proceed on the basis that the 554 mark was valid. In outline, the issues arising for determination in the various sets of proceedings included (a) whether further evidence of use should have been admitted in the cancellation proceedings or should now be admitted on appeal; (b) if so, what would be a fair specification for the 115 mark; (c) if not, whether the hearing officer erred in ordering the revocation of the 115 mark; (d) whether Titanic Liverpool had infringed the 423 mark; (e) if so, whether Titanic Liverpool could rely upon the own name defence under s.11(2) of the Trade Marks Act 1994 ( the 1994 Act ) and, if not, whether injunctive relief was appropriate; (f) whether the 423 mark was valid in the light of the 115 and 544 marks; (g) whether the 115 and/or 554 marks had been infringed by Titanic Huddersfield; (h) whether Titanic Huddersfield could rely upon any goodwill built up under the name Titanic Spa in a passing off action in the event that such use infringed; (i) whether the acts of Titanic Liverpool in relation to the Titanic Hotel Liverpool amounted to passing off; and (j) whether a declaration that Titanic Belfast and Titanic Liverpool were legitimately entitled to use the signs TITANIC QUARTER and TITANIC QUARTER HOTEL LIVERPOOL should be granted. More specifically, a key issue on the appeal in relation to the 115 mark was whether current Registry practice in relation to the admission of late evidence as set out in the Trade Marks Manual was correct. If the late evidence was to be adduced, it would not appear to have been in issue that there had been use of the mark in the relevant period for all of the services for which it was registered in class 36 (see [46] of the judgment). The question was one of arriving at a fair specification having regard to the partial use shown in relation to services in classes 41 and 43. The evidence before the court showed, inter alia, that a large development had been open for business under the name TITANIC QUARTER in the relevant period in Belfast and that this contained a number of different businesses, including hotels, museums, exhibitions, restaurants and residential accommodation. Titanic Huddersfield argued, inter alia, that theme parks, amusements, provision of recreation activities and facilities and provision of cultural activities and facilities in class 41 and provision of accommodation, hotel services, restaurant services; cafes; snack bars; fast food bars in class 43 should be deleted and suggested revised wording as set out at [55], [65] and [66] of the judgment.

3 454 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL H8 H9 H10 As to Titanic Huddersfield s claims of infringement of registered trade mark and passing off against Titanic Liverpool, much of the argument centred on the question as to whether there was a likelihood of confusion between TITANIC SPA and TITANIC HOTEL and/or TITANIC LIVERPOOL and, in so far as there was, the nature and extent of such confusion, what had caused it and whether steps either had been taken or could be taken to avoid it in future. Both businesses had been using the name TITANIC, both had been promoting spas and there was some evidence of actual confusion, albeit mostly wrong way round confusion. There was also extensive argument in relation to the pleaded defence of use of own name. Turning to the infringement claim made by Titanic Belfast and Titanic Liverpool against Titanic Huddersfield, this turned essentially on the question whether there was a likelihood of confusion between TITANIC QUARTER and TITANIC SPA. Titanic Belfast and Titanic Liverpool advanced their case largely as a squeeze argument and on specifically relied upon the terms Titanic Huddersfield s own pleading filed in the IPEC, which included the assertion that the word SPA did not add any significant level of distinctiveness to the TITANIC SPA mark such as to serve to differentiate between TITANIC SPA and TITANIC HOTEL. Held, Further evidence H11 H12 (1) The hearing officer had made material and significant errors of principle when considering the materiality of the further evidence which TTL sought to file. She should have asked the question whether that evidence was likely to make a material difference to the outcome of the cancellation application but she had neither asked, nor answered, this question. She needed to discuss its contents and explain why she considered that it was not sufficiently material. The sole basis for her decision was an inaccurate assessment of TTL s position, namely that it had conceded that the evidence already filed was sufficient to show genuine use. However TTL had only made it clear that it accepted that the evidence was material and it had then been incumbent upon her to form her own view, which she had not done ([20]-[26]) REEF Trade Mark [2002] EWCA Civ 763; [2003] R.P.C. 5, CA, referred to. (2) On applications to admit late evidence, the registrar should primarily consider the following factors, although the weight to be attached to them would vary from case to case: (i) the materiality of the evidence to the issues to be determined; (ii) the justice and fairness of subjecting the opposite party to the burden of the evidence at the stage that the registry proceedings had reached, including the reasons why the evidence was not filed earlier; (iii) whether the admission of the further evidence would prejudice the opposite party in ways that could not be compensated for in costs (e.g. excessive delays); and (iv) the fairness to the applicant of excluding the evidence, including prejudice to the applicant if it was unable to rely on it. ([34]) Lappet Manufacturing Co Ltd v Yosif Abdulrahman Al-Bassam Trading Establishment BL O/467/02, explained. Published by Oxford University Press for the Intellectual Property Office

4 [2017] R.P.C H13 H14 H15 (3) In the present case, the hearing officer had not considered the prejudice to TTL if it was unable to rely on the further evidence. Whilst this was understandable given that she was following registry practice, it was nonetheless an error of law and principle. ([35]) (4) Further, Titanic Huddersfield had not indicated that it wished to file evidence in response. Therefore, the hearing officer had been incorrect to conclude that admission of TTL s further evidence would delay the final decision significantly. She had taken account of an irrelevant factor and had failed to consider that Titanic Huddersfield was not asking for an adjournment. This was a further error of principle. ([40]) (5) Having regard to all the circumstances, the hearing officer should have admitted the further evidence and the appeal on this issue was accordingly allowed. The following factors were taken into account: (i) The evidence was highly material to the issues before the hearing officer. It showed trade mark use within the relevant period, of (at least) a number of services within the specification. Yet the 115 mark had been revoked in respect of all services for which it was registered. (ii) There was some prejudice to Titanic Huddersfield if the further evidence was admitted. It had only been served a few days before the hearing, and counsel would have had a limited time to consider it. On the other hand, the evidence was easy to follow and it consisted of facts within the knowledge of TTL, to which Titanic Huddersfield did not intend to serve evidence in reply. (iii) The evidence could have been served earlier and there was no proper excuse for its lateness. (iv) There was no question of an adjournment if the evidence was admitted, and therefore no question of any delay to the hearing. (v) There was very significant prejudice to TTL if the evidence was excluded, in that it stood to lose a valuable registered trade mark. This outweighed any prejudice to Titanic Huddersfield if the evidence was admitted. (vi) Although the hearing officer had been concerned that admission of the further evidence would undermine an earlier decision of the IPO to refuse to admit further evidence, the hearing officer s decision was not the same. A mere indication that evidence might be filed was much less likely to carry weight than if the evidence was ready and the tribunal was asked to consider its contents. ([41], [42]) H16 (6) Had the further evidence been correctly excluded by the hearing officer, there would have been no grounds for admitting it on appeal, where the test for admissibility was more difficult to satisfy. ([44]) Gerry Weber International AG v Guccio Gucci SpA [2015] R.P.C. 9, App. Person, distinguished. Fair specification H17 (7) In addition to those principles summarised in the Stichting BDO case, the principles to be applied when considering whether there had been genuine use of a trade mark were as follows: (i) genuine use of a trade mark could occur when that mark was used alongside other trade marks or signs; (ii) where the trade mark proprietor had made genuine use of the mark in respect of some goods or services covered by the general wording of the specification,

5 456 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL and not others, it was necessary for the court to arrive at a fair specification in the circumstance, which may require amendment; (iii) in cases of partial revocation pursuant to s.46(5) of the Trade Marks Act 1994 ( the 1994 Act ), the question was how would the average consumer fairly describe the services in relation to which the trade mark had been used; (iv) it was not the task of the court to describe the use made by the trade mark proprietor in the narrowest possible terms unless that was what the average consumer would do; (v) a trade mark proprietor should not be allowed to monopolise the use of a trade mark in relation to a general category of goods or services simply because it had used it in relation to a few. Conversely, a proprietor could not reasonably be expected to use a mark in relation to all possible variations of the particular goods or services covered by the registration; (vi) in some cases, it may be possible to identify subcategories of goods or services within a general term which were capable of being viewed independently. In such cases, use in relation to only one subcategory would not constitute use in relation to all other subcategories. On the other hand, protection should not be cut down to those precise goods or services in relation to which the mark had been used. This would be to strip the proprietor of protection for all goods or services which the average consumer would consider to belong to the same group or category as those for which the mark had been used and which were not in substance different from them. ([47]) H18 H19 H20 Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] E.T.M.R. 31, [2013] F.S.R. 35, Ch D; T-29/04 Castellblanch SA v Office for Harmonisation in the Internal Market [2005] E.C.R. II-5309; [2006] E.T.M.R. 61, CFI; Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] F.S.R. 19, CA; Thomas Pink Ltd v Victoria s Secret UK Ltd [2014] EWHC 2631 (Ch); [2014] E.T.M.R. 57, [2014] F.S.R. 40, Ch D; Pan World Brands v Tripp Ltd (EXTREME Trade Mark) [2008] R.P.C. 2, App. Person; Maier v ASOS Plc [2015] EWCA Civ 220, [2015] F.S.R. 20, CA, and T-256/04 Mundipharma AG v OHIM [2007] E.C.R. II-449, CFI, referred to. (8) Genuine use of the Titanic Quarter mark had been shown in respect of the services in class 41. The average consumer would fairly have described them in terms of the current specification and accordingly no amendment was required. ([54]-[63]) (9) The specification of services for the 115 mark in class 43 was fair and did not require any amendment. It was not necessary to delete provision of accommodation from the specification of services in class 43 of the 115 mark. Nor was it necessary to amend the specification to rental of short term accommodation excluding any ancillary services hotel services or serviced short stay accommodation. This was too narrow, would not be used as a fair description by the average consumer, and failed to cover the totality of the services in this category for which the mark had been used. The specification of services for the 115 mark in class 43 did not require amendment insofar as it included hotel services either. ([64]-[74]) (10) In the circumstances, the question as to whether the hearing officer erred in law or principle in ordering the revocation of the 115 mark even if the evidence was not to be admitted did not arise. However it was noted that the evidence originally served by the trade mark proprietor was noticeably lacking in detail and the evidence now admitted was crucial to the court s decision to allow the appeal. ([75]) Published by Oxford University Press for the Intellectual Property Office

6 Infringement by Titanic Liverpool in respect of the Titanic Hotel Liverpool H21 (11) There was a likelihood of confusion, within the meaning of s.10(2) of the 1994 Act, between the TITANIC SPA mark and the sign TITANIC HOTEL. Visually and aurally, there was similarity between the mark and sign, since both contained the word Titanic (although the argument that TITANIC was the dominant and distinctive element of the mark was rejected) and there was also conceptual similarity between the mark TITANIC SPA and the sign TITANIC HOTEL. The average consumer would be aware that it was common for hotels to have spas and might therefore believe that goods or services provided under these names came from the same, or economically linked undertakings. Further, the mark TITANIC SPA had an enhanced distinctive character as a result of the use made of it and Titanic Liverpool offered services which were identical, or highly similar, to the services for which the TITANIC SPA mark was registered, which included accommodation and dining services, and spa, gym, pool and fitness services. ([76]-[83]) Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] F.S.R. 19, CA and Maier v ASOS Plc [2015] EWCA Civ 220, [2015] F.S.R. 20, CA, applied. H22 (12) There was also a likelihood of confusion within the meaning of s.10(2) between the TITANIC SPA mark and the sign TITANIC LIVERPOOL as the average consumer might believe that it was the Liverpool branch of TITANIC SPA. The same conclusion applied to the other signs complained of, which additionally included the word spa. ([83], [88]) H23 (13) There was also some evidence of actual confusion. Most, although not all of the confusion was wrong way round confusion, where members of the public considered that the Titanic Spa in Huddersfield had some connection with the Titanic Hotel Liverpool. The use of the word spa at the Titanic Hotel Liverpool, as a part of the name of its health facilities, had contributed considerably to such confusion. Both businesses had been using the name Titanic and both had been promoting spas. ([84]) H24 (14) Titanic Huddersfield could have done more to avoid confusion, e.g. by placing a notice on its website that it had no connection with the Titanic Hotel Liverpool. However, it was not accepted that Titanic Huddersfield had caused the confusion that had occurred. The Huddersfield location was reasonably prominent, Titanic Huddersfield was not bidding on Titanic Liverpool s names as keywords, and it was not established that Titanic Huddersfield had been seeking to attract customers of Titanic Liverpool to its website. ([85]-[86]) H25 (15) However, it was important to keep these instances of confusion in perspective. They were evidence of some confusion in practice, as a result of simple errors in online booking, caused by use by both parties of the word Titanic whilst offering spa services. Since the rebranding of the spa at the Titanic Hotel to Maya Blue in April 2016, instances of confusion had decreased very substantially. A likelihood of confusion would be easy to avoid if further steps were taken to distinguish Titanic Liverpool from Titanic Spa. ([87]) Own name defence [2017] R.P.C H26 (16) The relevant principles in respect of use in accordance with honest commercial practices were:

7 458 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL (i) the requirement that the use be in accordance with honest practices constituted the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor; (ii) all circumstances should be considered when ascertaining whether or not the use was honest, including whether the defendant could be regarded as unfairly competing with the proprietor of the trade mark; (iii) an important factor was whether the use of the sign complained of either gave rise to consumer deception or took unfair advantage of, or was detrimental to, the distinctive character or repute of the trade mark - if it did, it was unlikely to be in accordance with honest practices; (iv) a likelihood of confusion could be in accordance with honest practices if there was a good reason why such confusion should be tolerated; (v) whether the defendant ought to have been aware of the existence of substantial confusion or deception was a relevant factor; (vi) the duty to act fairly required a balancing, or reconciliation, of potentially conflicting interests an the court was required to carry out an overall assessment of all the relevant facts and circumstances. ([91]-[92]) H27 Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 (Ch); [2009] R.P.C. 9, Ch D and [2010] EWCA Civ 110; [2010] R.P.C. 16, CA and Maier v ASOS Plc [2015] EWCA Civ 220, [2015] F.S.R. 20, CA, referred to. (17) The circumstances lending support for the proposition that the use complained of was in accordance with honest commercial practices were: (i) Titanic Liverpool had not chosen its name with any intention of confusing the public, or in any way associating itself with the business of Titanic Huddersfield and it had not tried to do so since the hotel opened in 2014; (ii) the Titanic Hotel Liverpool was a natural extension of the Titanic Quarter brand, given the history of RMS Titanic; (iii) there was some distinction between the type of business carried on by Titanic Liverpool and Titanic Huddersfield: Titanic Liverpool ran a large luxury hotel which, amongst its numerous facilities includes a spa whereas the business of Titanic Huddersfield was as a residential eco-spa where the primary purpose of a visit was to enjoy the spa facilities; (iv) Titanic Liverpool had taken steps to minimise the risk of any confusion between itself and Titanic Huddersfield, had made efforts to achieve an agreed resolution of the dispute including unilaterally rebranding the spa facility at the hotel to Maya Blue Spa, taking steps to ensure that negative keywords Tiatanic Spa were applied to its Adword campaign and offering to add a statement to the Titanic Hotel Liverpool website to the effect that it was not associated with the claimant or the Titanic Spa and to provide a link to Titanic Huddersfiled s website. In addition it had offered to undertake to remove the word spa from its websites and promotional material and to rebrand the facility as the Maya Blue Health and Fitness Centre ; (v) the court was not satisfied that Titanic Huddersfield s business had suffered financial loss by reason of such confusion. ([94]-[100]) H28 (18) Circumstances pointing in the opposite direction were: (i) There was a considerable overlap between the businesses of Titanic Liverpool and Titanic Huddersfield - the emphasis was different, but the Published by Oxford University Press for the Intellectual Property Office

8 [2017] R.P.C similarity was clear given that they both promoted and offered spa facilities with residential accommodation; (ii) Titanic Liverpool had commenced the use complained of in 2014, after Titanic Huddersfield had registered its trade mark and after it had traded under that name for several years; (iii) there was evidence of actual confusion, although this had very substantially decreased since measures have been taken by Titanic Liverpool to avoid it; (iv) this was a case where trade mark searches had been performed and where the Titanic Spa trade mark application had been discovered in 2011; had Titanic Liverpool investigated further in 2013, they would have found the business carried on by Titanic Huddersfield, and, in those circumstances, should have appreciated that confusion was likely. It was imprudent not to have performed new trade mark searches in 2013, but not uncommon. This factor was relevant but not decisive. ([101]-[108]) H29 H30 H31 H32 H33 H34 (19) The decision on this aspect of the case was finely balanced, but having weighed all of the circumstances, the own name defence in respect of past acts of infringement should not succeed. There had been confusion, particularly before the spa was rebranded to Maya Blue and the steps taken by Titanic Liverpool to prevent such confusion had been somewhat belated. ([109]) (20) On the other hand, provided that Titanic Liverpool undertook to place a prominent notice on its website which made clear that it had no connection with Titanic Huddersfield, and ceased all use of the word spa in connection with its hotel, the own name defence should succeed in respect of the future. Such future use would be consistent with the duty to act fairly towards the legitimate interests of Titanic Huddersfield, as the functions of the Titanic Spa mark would not be affected. It would not affect the ability of Titanic Huddersfield to use its brand to attract and retain customers, nor would it affect further legitimate expansion of its business. It would amount to fair competition and would be in accordance with honest commercial practices. ([110], [111]) Injunctive relief (21) The question of the proportionality of injunctive relief in the event that Titanic Liverpool s own name and other defences had failed might no longer arise. However, in the event that the parties asked for that issue to be determined, it would be addressed in a separate judgment. ([113]) Validity and infringement of the TITANIC QUARTER registrations (22) The services for which Titanic Huddersfield had used its sign were identical to the class 43 services for which the Titanic Quarter marks were registered. ([116]) (23) Titanic Huddersfield had made too sweeping a claim, to the effect that it could monopolise all use of the word Titanic in the name of a hotel. Having rejected the proposition that the marks Titanic Spa and Titanic Hotel should be compared on the basis of a single dominant and distinctive element rather than as a composite, the wider propositions advanced by Titanic Huddersfield were rejected. In the circumstances, the squeeze argument relied on by Titanic Liverpool and Titanic Belfast did not apply. ([121]) (24) Assuming notional fair use of the TITANIC QUARTER marks within the scope of the registrations, there was no likelihood of confusion between the TITANIC QUARTER Marks and the TITANIC SPA mark and sign. Accordingly, the challenge to validity of the TITANIC SPA mark was rejected and use of that

9 460 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL H35 sign by Titanic Huddersfield did not amount to an infringement of the TITANIC QUARTER Marks. Although there was visual and aural similarity as a result of the presence of the word Titanic, conceptually they were different. The composite mark TITANIC QUARTER whilst possessing a distinctive character, nonetheless conveyed the message of an area or geographical location. The sign TITANIC SPA conveyed a quite different message, of a business which offered spa facilities. Although used in respect of identical services, the TITANIC QUARTER marks did not have enhanced distinctive character through use. The fact that there was no evidence of actual confusion did not affect the conclusion reached as there was negligible competition between Titanic Quarter in Belfast and Titanic Spa in Huddersfield and so actual confusion was not to be expected. ([122]-[126]) T-78/13 Red Bull GmbH v Office for Harmonisation in the Internal Market EU:C:2015:72, [2015] E.T.M.R. 18, GC, referred to. Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] E.T.M.R. 56, [2004] R.P.C. 40, CA, applied. (25) Accordingly the challenge to the validity of the TITANIC SPA mark was rejected and the use of that sign by Titanic Huddersfield did not amount to infringement of the TITANIC QUARTER marks. ([126]) Reliance on goodwill in TITANIC SPA in the event infringement had been established H36 (26) In the circumstances this issue did not arise. ([127]) Passing off H37 H38 H39 H40 (27) When assessing whether passing off had been established it was important to bear in mind that there was a distinction between misrepresentation and confusion and that the scope of passing off was not the same as the scope of protection for infringement of a registered trade mark. ([129]) Reckitt & Coleman Products Ltd v Borden Inc (No. 3) [1990] 1 WLR 491, [1990] R.P.C. 341, HL; Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41; [2016] F.S.R. 30, CA and Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] R.P.C. 5, CA referred to. (28) Titanic Huddersfield had acquired goodwill in the name TITANIC SPA in relation to the provision of spa services with temporary accommodation but not a substantial goodwill throughout the United Kingdom in the mark TITANIC alone. ([132]) (29) Before rebranding the spa to Maya Blue there had been misrepresentation by Titanic Liverpool, which amounted to more than mere confusion. Although the majority of instances of confusion were wrong way round confusion (where the consumer might know only of Titanic Liverpool), other instances were of right way round confusion. Such confusion was likely to have been damaging to the goodwill of Titanic Huddersfield, e.g. where customers had been frustrated that they had made a reservation at the wrong place. ([133]) (30) It was doubted whether misrepresentation continued after the re-branding of the spa to Maya Blue, together with the other steps already taken by Titanic Liverpool to avoid confusion. However, on balance, it would be necessary to take the additional steps offered by Titanic Liverpool in order adequately to distinguish its hotel from Titanic Huddersfield s spa. Once those steps had been taken, there would not be any misrepresentation, any real likelihood of damage to the goodwill of Titanic Huddersfield, or any real likelihood of diversion of trade. In those Published by Oxford University Press for the Intellectual Property Office

10 [2017] R.P.C H41 circumstances, the use of the name Titanic Hotel Liverpool for a large hotel offering restaurant, conferencing, wedding facilities and a health and fitness facility did not constitute a misrepresentation that the hotel was operated by or connected with Titanic Spa in Huddersfield. ([134], [135]) (31) In conclusion, the passing off claim succeeded in respect of the past acts complained of, but, having regard to the steps taken and proposed to be taken by Titanic Liverpool to distinguish its hotel from the business operated by Titanic Huddersfield, it failed in respect of the future. ([137]) Reckitt & Coleman Products Ltd v Borden Inc (No. 3) [1990] 1 WLR 491, [1990] R.P.C. 341, HL, referred to. Declaration H42 H43 H44 (32) It was just to all parties, to ensure commercial certainty, that the declaration sought should be made. The declaration sought would serve a useful purpose, the underlying issue and relief sought were sufficiently clearly defined and there were no special reasons for not doing so. Titanic Huddersfield s case was that use of the word TITANIC whether on its own or in combination with other terms, constituted an infringement of its trade mark. However, it had been held that TITANIC QUARTER and TITANIC SPA were not confusingly similar, so this objection failed. Titanic Belfast was entitled to use the mark TITANIC QUARTER in respect of hotels, to sub-license Titanic Liverpool to use these marks, and to extend the TITANIC QUARTER brand to other parts of the UK in future. ([139]-[142]) Arrow Generics Ltd v Merck & Co, Inc [2007] EWHC 1900 (Pat); [2007] F.S.R. 39, Pat Ct, applied. Observed: It is possible that a few particularly careless consumers may still reserve rooms at the wrong location even after these steps have been taken... However, to drive to Liverpool, having reserved at an establishment which makes clear that it is located in Huddersfield, is the act of the proverbial moron in a hurry, as opposed to the average consumer. ([136]) Cases referred to in judgment: Arrow Generics Ltd v Merck & Co, Inc [2007] EWHC 1900 (Pat); [2007] F.S.R. 39, Pat Ct Bastionspark LLP v Commissioners for Her Majesty s Revenue and Customs [2016] UKUT 425 (TCC), [2016] STC 2549, Upper Trib. (Tax and Ch) Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] 1 WLR 193, [1981] R.P.C. 429, PC (Aus.) T-29/04 Castellblanch SA v Office for Harmonisation in the Internal Market [2005] E.C.R. II-5309; [2006] E.T.M.R. 61, CFI Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41; [2016] F.S.R. 30, CA Financial Services Authority v Rourke (t/a JE Rourke & Co) [2002] CP Rep 14, [2001] All ER (D) 266 (Oct), Ch D Gerry Weber International AG v Guccio Gucci SpA [2015] R.P.C. 9, App. Person Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 (Ch); [2009] R.P.C. 9, Ch D Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110; [2010] R.P.C. 16, CA Lappet Manufacturing Co Ltd v Yosif Abdulrahman Al-Bassam Trading Establishment BL O/467/02, 25 October 2002 (unreported), IPO

11 462 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL Maier v ASOS Plc [2015] EWCA Civ 220, [2015] F.S.R. 20, CA Messier-Dowty Ltd v Sabena SA [2001] 1 WLR 2040, [2001] 1 All ER 275, CA T-256/04 Mundipharma AG v OHIM, EU:T:2007:46, [2007] E.C.R. II-449, CFI Nokia Corp v InterDigital Technology Corp [2006] EWCA Civ 1618; [2007] F.S.R. 23, CA Pan World Brands v Tripp Ltd (EXTREME Trade Mark) [2008] R.P.C. 2, App. Person. Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] R.P.C. 5, CA Reckitt & Coleman Products Ltd v Borden Inc (No. 3) [1990] 1 WLR 491, [1990] R.P.C. 341, HL T-78/13 Red Bull GmbH v Office for Harmonisation in the Internal Market EU:C:2015:72, [2015] E.T.M.R. 18, GC Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] E.T.M.R. 56, [2004] R.P.C. 40, CA REEF Trade Mark [2002] EWCA Civ 763; [2003] R.P.C. 5, CA Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] F.S.R. 19, CA Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] E.T.M.R. 31, [2013] F.S.R. 35, Ch D Thomas Pink Ltd v Victoria s Secret UK Ltd [2014] EWHC 2631 (Ch); [2014] E.T.M.R. 57, [2014] F.S.R. 40, Ch D Roger Wyand Q.C. and Ben Longstaff, instructed by Taylor Wessing LLP, appeared for the claimant. Hugo Cuddigan Q.C. and Kathryn Pickard, instructed by Charles Russell Speechlys LLP, appeared for the defendants. JUDGMENT Henry Carr J.: Introduction 1 This is a battle about trade marks which include the name Titanic. Property Renaissance Ltd ( Titanic Huddersfield ) trades under the name Titanic Spa. It runs a luxury spa business which is located in an Edwardian former textile mill known as Titanic Mills. Titanic Mills was constructed in 1911 and was so named because of its large size. It is a coincidence that its opening fell in the same year as the launch of the ill-fated ocean liner, the RMS Titanic. Titanic Spa opened in 2005 and has been successful. The turnover of the business in 2015 was 4.8 million. It now offers overnight accommodation in 33 serviced apartments. 2 Titanic Huddersfield is the registered proprietor of UK Trade Mark No for the words Titanic Spa ( the Titanic Spa mark ). The Titanic Spa mark was filed on 16 April 2011 and registered on 10 June 2011 in respect of various services in classes of 35, 41, 43 and 44. In March 2015, Titanic Huddersfield brought a claim for infringement of the Titanic Spa mark and passing off in the Intellectual Property Enterprise Court ( the IPEC claim ) against Stanley Dock Hotel Limited and Stanley Dock Properties Limited ( Titanic Liverpool ). Titanic Liverpool operate a well-known and successful hotel under the name the Titanic Hotel Liverpool. This Published by Oxford University Press for the Intellectual Property Office

12 [2017] R.P.C hotel opened in June 2014, following promotion from October 2013 onwards. From February 2014 publicity materials included references to a spa in the hotel, and from April 2014 such materials referred to the spa as the T-Spa. The T-Spa did not open until November 2014 and was formally launched in March By letters sent in August 2014 and November 2014, Titanic Huddersfield complained about use of the name T-Spa at the Titanic Hotel Liverpool. From December 2014, the spa was rebranded as the Spa. A further rebranding exercise was completed in April 2016 and the spa was renamed Maya Blue Spa. However, Titanic Huddersfield maintains its claim against Titanic Liverpool in the IPEC claim, and complains about use of Titanic in the name of the hotel. 4 Titanic Liverpool operates its hotel under licence from Titanic Trademark Limited and Titanic Quarter Limited ( TTL and TQL, collectively Titanic Belfast ). Each of these companies is the registered proprietor of certain trade marks in respect of or including the words Titanic Quarter. Certain of these trade mark registrations predate the opening of Titanic Spa by Titanic Huddersfield, and pre-date the registration of the Titanic Spa mark. The driving force behind Titanic Belfast is Mr Patrick Doherty, who, through these and other companies, was responsible for the redevelopment of Titanic Quarter in Belfast. 5 Titanic Quarter is the biggest property development scheme ever undertaken in Northern Ireland and is one of Europe s largest regeneration schemes. The Titanic Belfast and Titanic Liverpool companies are under the substantial ownership and control of Mr Doherty. The Titanic Hotel Liverpool was so named because of Mr Doherty s desire to expand the Titanic brand into other areas with a connection to the RMS Titanic. Liverpool was an obvious choice, as the location of the headquarters of the White Star Shipping Line, and the city in which the Titanic was first registered. 6 In January 2015, a few months prior to issue of the IPEC claim, Titanic Huddersfield filed an application in the UK Intellectual Property Office for cancellation for non-use of UK trade mark no Titanic Quarter ( the 115 mark). The 115 mark was filed on 24 June 1999 and registered on 25 July It was registered in respect of a variety of services in classes 36, 41, 42 and 43. By decision O dated 8 March 2016, the hearing officer, Ms. Ann Corbett, concluded that the application for cancellation of the 115 mark succeeded in full ( the UKIPO Decision ). Subject to any successful appeal, she decided that the 115 mark would be revoked from 26 July 2008 under s.46(1)(a) of the Trade Marks Act TTL, the proprietor of the 115 mark, has appealed to the High Court against the decision of the hearing officer not to admit certain evidence which was filed shortly before the hearing. Alternatively, it contends that the relevant evidence should be admitted on appeal. Further, and whether or not the further evidence is admitted, it appeals the hearing officer s finding that the 115 mark should be revoked for non-use ( the Appeal ). 8 In July 2016 Titanic Belfast and Titanic Liverpool issued a claim in the High Court for infringement of the Titanic Quarter marks by Titanic Huddersfield, by reason of its use of the name Titanic Spa ( the High Court claim ). As well as alleging infringement of the 115 mark, there is also an allegation of infringement of European Union Registered Trade Mark No. 3,118,544 ( the 544 mark ). The 544 mark is registered for goods and services in classes 16, 36, 37, 41 and 43, with a filing date of 21 March 2003 and the date of registration of 19 August It is a

13 464 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL device mark which includes prominent use of the word Titanic as shown below: 9 In January 2015 Titanic Huddersfield also commenced an action in the EU Intellectual Property Office to revoke the 544 mark for non-use. However, that action has not yet been heard, and it is common ground that I shall proceed on the basis that the 544 mark is valid. 10 At a hearing on the 28 July 2016, Norris J. ordered that the IPEC claim, the High Court claim and the Appeal should all be heard together. This judgment deals with all of those proceedings. 11 It will be seen from this complex procedural history that Titanic Huddersfield seeks to injunct Titanic Liverpool from continuing to use the word Titanic as part of the name of its hotel, and Titanic Belfast and Titanic Liverpool seek to injunct Titanic Huddersfield from continuing to use the word Titanic as part of the name of its spa. Captain Arthur H Rostron, who attempted to rescue survivors from the wreck of the RMS Titanic, wrote in his log that: Icebergs loomed up and fell astern and we never slackened. It was an anxious time with the Titanic s fateful experience very close to our minds. This seems a reasonable description of the commencement, continuance and possible outcome of this dispute. Both sides have valuable businesses, and this is very high risk litigation which puts in jeopardy the goodwill which Titanic Huddersfield and Titanic Liverpool have built up. The issues 12 The following is a brief list of issues in the three sets of proceedings. Depending on the conclusions that I reach, it may not be necessary to decide all of these issues: (i) Did the hearing officer err in law or in principle in refusing to admit further evidence sought to be adduced by TTL? (ii) If so, should that evidence have been admitted? (iii) If not, should that evidence now be admitted on appeal? (iv) If the further evidence is admitted, what is a fair specification of services for the 115 mark, having regard to the use which has been made of it? (v) If the further evidence is not admitted, did the hearing officer nonetheless err in law or in principle in ordering revocation of the 115 mark? (vi) Is Titanic Huddersfield s Titanic Spa mark infringed by the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool? (vii) If so, can Titanic Liverpool rely on the own name defence under s.11(2) of the Trade Marks Act 1994? (viii) If not, is it appropriate to grant injunctive relief to restrain further use of the word Titanic by Titanic Liverpool? Published by Oxford University Press for the Intellectual Property Office

14 [2017] R.P.C (ix) Is the Titanic Spa mark valid in the light of the 115 mark and/or the 544 mark ( the Titanic Quarter registrations )? (x) Are either or both of the Titanic Quarter registrations infringed by Titanic Huddersfield s use of the name Titanic Spa? (xi) Is Titanic Huddersfield entitled to rely on any goodwill accrued to it in respect of Titanic Spa in the event that Titanic Huddersfield s use of that sign amounts to infringement of the Titanic Quarter marks? (xii) Do the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool amount to passing off? (xiii) Should Titanic Belfast and Titanic Liverpool be granted a declaration that they are legitimately entitled to use the signs Titanic Quarter and Titanic Quarter Hotel Liverpool and the 544 device mark in relation to hotels in the United Kingdom? 1. Did the hearing officer err in law or in principle in refusing to admit further evidence sought to be adduced by TTL? 13 The hearing officer set out the procedural aspects of the application before her at [4] to [11] of the UKIPO Decision. In brief summary, TTL filed the first witness statement of John Nicholl on 8 June 2015 and requested an extension of time to allow it to file other evidence. That request was refused by the IPO. Titanic Huddersfield was then allowed until 22 September to file evidence in answer. On 22 September it requested an extension of time, which was granted until 3 November. On 3 November Titanic Huddersfield filed written submissions, but chose not to file any evidence. By a letter dated 10 November, the IPO advised the parties that the evidence rounds were considered complete. 14 On 1 December 2015, Charles Russell Speechlys ( CRS ), who had recently been appointed as TTL s solicitors, requested reconsideration by the IPO, to allow it to file evidence in reply to the submissions made by Titanic Huddersfield. The letter stated that CRS had only recently been appointed as representatives for TTL and requested until 18 January 2016 to file evidence in response, being a second statement from Mr Nicholl. It acknowledged that this would result in a postponement of the hearing, which had been fixed for 18 January By a further letter dated 23 December 2015 CRS requested transfer of the proceedings to IPEC or alternatively for permission to file further evidence in the form of a witness statement from Mr Harvey, which had already been filed in the IPEC claim. No response was received at this stage from Titanic Huddersfield. On 13 January 2016 CRS sent a further letter requesting admittance of the second witness statement of John Nicholl and exhibits thereto dated 13 January 2016, which accompanied that letter. 16 At the hearing on 18 January 2016, Titanic Huddersfield did not object to the admittance of the evidence of Mr Harvey and did not seek to file any evidence in response to it. It did, however, object to admittance of the second witness statement of Mr Nicholl, which the hearing officer refused to allow into the proceedings.

15 466 PROPERTY RENAISSANCE V STANLEY DOCK HOTEL The role of the appellate tribunal 17 I am not conducting a rehearing of the case before the hearing officer, but rather, a review of her decision. The decision to refuse to admit further evidence was a multifactorial assessment and the approach to be applied in such cases, appeals from decisions of the Registrar, was set out by Robert Walker L.J. in REEF Trade Mark [2002] EWCA Civ 763; [2003] R.P.C. 5 at [28]: In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct material error of principle. 18 A decision refusing to admit further evidence into proceedings is an exercise of discretion. The discretion to admit late evidence is provided by r. 38(8) of the Trade Mark Rules 2008/1797, which provides that: The registrar may, at any time, give leave to either party to file evidence upon such terms as the registrar thinks fit. 19 In Bastionspark LLP v The Commissioners for Her Majesty s Revenue and Customs [2016] UKUT 425 (TCC), [2016] STC 2549, Nugee J. summarised the approach of the appeal court in such cases at [20]:...an appellate court or tribunal can only interfere where the lower court or tribunal has exceeded the generous ambit within which reasonable disagreement is possible (G v G (Minors) [1985] 1 WLR 647 at 652 per Lord Fraser); or where the judge has either erred in principle in his approach, or has left out of account, or taken into account, some feature that he should, or should not, have considered, or that [the exercise of] his discretion is wholly wrong because the court is forced to the conclusion that he has not balanced the various factors fairly in the scale (Roache v News Group Newspapers Ltd (1992) [1998] EMLR 161 at 172 per Stuart Smith LJ; Alleged errors of principle Materiality 20 The first factor that the hearing officer identified for consideration when dealing with a request to file further evidence was the materiality of the evidence; UKIPO Decision at [28]. 21 The only discussion of materiality in the UKIPO Decision is at [31]. Having stated that there would be a significant burden on Titanic Huddersfield, and a significant delay in the proceedings if the evidence was admitted, the hearing officer said: That said, the burden and delay has to be weighed against other factors such as the materiality of the proposed evidence which is sought to be filed. In this case, I note that Mr Baran submitted at the hearing that the registered proprietor was satisfied that its other evidence i.e. the first statement of Mr Nicholl along with the now admitted witness statement of Mr Harvey, is sufficient to show that genuine use had been made of the mark within the relevant period. Taking all Published by Oxford University Press for the Intellectual Property Office

16 matters into account, I refused to admit the further witness statement of Mr Nicholls. 22 Mr Cuddigan Q.C., on behalf of TTL, made several criticisms of the hearing officer s approach to materiality. First, the hearing officer ought to have asked the question whether the evidence that TTL sought to file was likely to make a material difference to the outcome of the cancellation application. She neither asked, nor answered, this question. As is customary in registry decisions, the hearing officer set out a very detailed summary of the evidence which had been filed in the proceedings at [36] to [69]. However, there is no summary given in the UKIPO Decision of the contents of the second statement of Mr Nicholl or its exhibits. When considering the materiality of this evidence, the hearing officer needed to discuss its contents and explain why she considered that it was not sufficiently material. 23 I agree with this criticism. There is no doubt that the second statement of Mr Nicholl shows use during the relevant period of Titanic Quarter as a trade mark. Yet the hearing officer revoked the 115 mark in its entirety. Mr Wyand Q.C., who appeared on behalf of Titanic Huddersfield, very sensibly accepted that if the further evidence is admitted, then the Appeal has to be allowed in part, albeit with a reduced specification of services. 24 Secondly, the hearing officer said at [31] that Dr Stuart Baran, who appeared on behalf of TTL, had stated that the evidence already filed in the proceedings was sufficient to show that genuine use had been made of the mark within the relevant period. This implies that he accepted that the further evidence was unnecessary. This formed the sole basis for the decision of the hearing officer that it was not material. However, this is not an accurate account of what was said by Dr Baran. At p. 17 of the transcript, the hearing officer asked whether he was saying that the fresh evidence was materially determinative. He replied: I certainly say that it is material. It is a matter for you whether it is determinative or not. I will not concede this cancellation action if this evidence is not allowed in. 25 It would have been very surprising if counsel had conceded that the 115 mark should be revoked if the further evidence was not admitted. He was certainly not required to make any such concession in order to show that the further evidence was material. He made clear that the evidence was material to the outcome of the application. It was then incumbent on the hearing officer to form her own view of whether the further evidence was likely to be material, which she did not do. 26 In my judgment, the hearing officer made material and significant errors of principle when considering the materiality of the further evidence. I should mention that the hearing officer was faced with evidence that she had only seen on the morning of the hearing, which must have placed her in a difficult position. Nonetheless, the UKIPO Decision is a reserved judgment, which was issued some weeks after the hearing, and there was the opportunity for a full explanation of why the evidence had been excluded. Prejudice to TTL [2017] R.P.C The second and third factors identified by the hearing officer at [28], when considering whether to admit late evidence, were as follows: