Choosing a name for your business is never easy, but you are always going to struggle to use a name very similar to an iconic name already in use by another.
That was a hard lesson learnt by the candle maker, Claridge Candles Limited, when sued by the London hotel, Claridge’s.
At the end of 2018, the Defendant began selling candles and infusers under the brand Claridge—or, to be precise, “Claridge London”.
Why the “London” clarification? That will become clear as we go on. The hotel is the registered proprietor of two UK trade marks protecting the word “CLARIDGE’S”.
The Claimant brought a trade mark infringement and passing off claim against the candle maker, relying on its registered and unregistered rights which protect the name Claridge’s. The Defendant counterclaimed for revocation of Claridge’s trade marks on the grounds of non-use which, while succeeding in part, did not impact on the outcome of the case.
The UK’s Trade Marks Act 1994 provided that even when the two names in question are not exactly the same and the goods and/or services protected by trade mark registrations are different to those offered by a defendant, if the use of the offending sign would:
then the trade mark owner has a right to complain.
Passing off provides a common law right, which is very similar to a trade mark infringement claim, protecting unregistered rights in a brand where the owner of the “goodwill” in the brand can show that a defendant’s use of its sign amounts to a “misrepresentation” such that the public believes that there is a connection between the two companies which results in damage.
In this hotel-versus-candles saga, the judge found that the Claimant’s mark had a reputation in the UK, and that the Defendant’s mark created a link between the two, providing the Defendant with an unfair advantage by its exploitation of the Claimant’s reputation. The judge was satisfied that the Defendant’s product had a distinctly luxury feel, matching the luxury of Claridge’s hotel, and that this would lead consumers to connect the Defendant’s goods to the Claimant’s trade mark. This link created the association between the two brands and thus, because there was no “due cause” for creating this link, the judge found that trade mark infringement was established under section 10(3) of the Trade Marks Act.
However, the judge did not believe that this “link” went so far as to create the “likelihood of confusion” required to succeed in a case under section 10(2) of the Trade Marks Act and so that element of the case was unsuccessful. Notwithstanding this finding, the Judge found that the way the Defendant branded its candles would mislead the public into believing the goods were connected to the Claimant’s business which, coupled with the likelihood of damage, led the judge to rule in favour of the Claimant on the passing off claim.
The interesting point of this case is that normally cases under section 10(2) and passing off go hand in hand. If you succeed in one, you succeed in both – but not here. It would appear that selling candles under the brand “Claridge London”, when the Defendant admitted that they had no connection to London whatsoever provided the misrepresentation that meant the Defendant had passed itself off as having a connection to the luxury London hotel when that was not the case.
Therefore, this case demonstrates that passing off provides wider protection than registered trade marks, which are necessarily limited by the brand in the precise form as registered and the scope of the specification of the goods and services (and which in this case had been limited further by their partial revocation).
This case is interesting and worth a read for three reasons:
Read the full decision here.
