January 19, 2017
Trade Mark Battle of TITANTIC proportions
Trade Mark Battle of TITANTIC proportions
Despite the potentially negative associations with the oceanic tragedy that took place over 100 years ago, TITANIC remains a popular choice of brand name for many businesses.  This popularity recently led to legal proceedings between a luxury spa business, TITANIC SPA (‘TS’), founded in 2005 and a hotel operator, TITANTIC HOTEL Liverpool (‘TH’) founded in 2014, in which each battled to stop the other using the name TITANIC (Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors [2016] EWHC 3103 (Ch)).

As the owners of the UK trade mark TITANIC SPA, TS brought an IPEC claim against TH for trade mark infringement.  TS also initiated cancellation proceedings (on the grounds of non-use) against the earlier UK trade mark TITANIC QUARTER owned by Titanic Trademark Limited (‘TTL’), a related party under which TH were operating under licence.

The UKIPO’s initial decision granted the revocation of TITANIC QUARTER with effect from 26 July 2008. This was appealed by TTL to the High Court on the basis that the Hearing Officer had wrongly refused to admit highly material evidence at the Hearing. TTL and TH also retaliated by issuing a counter claim for trade mark infringement in the High Court in respect of an EU trade mark for a logo version of TITANIC QUARTER.  On 2 December 2016, the High Court heard all of the claims together and issued its decision.

Some of the key legal issues debated included:

  • The late submission of evidence of use in the UKIPO cancellation proceedings against TITANTIC QUARTER: It was found that the Hearing Officer had erred in refusing this evidence as allowing it would have enabled the registration to survive. As such, the registration was restored.

  • Whether or not TH’s use of TITANIC HOTEL infringed TS’s registration for TITANTIC SPA: The Court felt it did – the marks TITANIC SPA and TITANIC HOTEL were found to be conceptually similar and, given the identical or highly similar nature of the services offered, it was likely the average consumer would believe that the services were provided by economically linked undertakings. TH was also found to be liable for passing off, although it was noted that TS had acquired goodwill in relation to the composite mark TITANITC SPA and not the word TITANIC alone.

  • Whether or not TH could rely upon the “own name defence” (provided by Section 11(2) Trade Marks Act 1994) in respect of this finding for infringement: The Court held no – although the name had not been adopted with an intention to confuse the public, the use had nonetheless given rise to actual customer confusion.

  • Whether or not TS infringed the TITANTIC QUARTER mark/logo: The Court held no - TITANIC SPA and TITANIC QUARTER were each distinguishable composite marks conveying different conceptual meanings.

Whilst TS may claim victory in this battle, TH and TTL were granted a declaration that they are legitimately entitled to use the trade marks TITANIC QUARTER, TITANIC QUARTER HOTEL LIVERPOOL, and the TITANIC QUARTER logo in relation to the provision of hotel accommodation in the UK.  Further stormy waters and legal icebergs may lie ahead if either side appeals the case in the Court of Appeal.  Watch this space for further updates!
Trademarks /  Travel /  Disputes

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