The recent judgment from the High Court of Justice in the case of Claire Stone v Alexandra Wenman shows that the registration of a trade mark can be declared invalid if a case of passing off can be established.
Two spiritual and holistic therapists were involved in a dispute over the use of the UK trade mark "ARCHANGEL ALCHEMY" (the "Trade Mark").
The Claimant had been the registered proprietor of the Trade Mark since 2019. She claimed that the Defendant had been infringing the Trade Mark by marketing and offering an online course which referred to the Trade Mark.
In defence, the Defendant claimed that she had consistently and continually been offering education, training and services by reference to "The Archangel Alchemist" and "Archangel Alchemy" (the "Defendant's Signs") since around 2010, and that protectible goodwill had accrued as a result. Accordingly, the Defendant denied trade mark infringement, and counterclaimed for passing off and a declaration of invalidity of the Trade Mark in accordance with section 47(2)(b) of the Trade Marks Act 1994 (the "Act").
Section 47(2)(b) of the Act provides that the registration of a trade mark may be declared invalid on the ground that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied, unless the proprietor of that earlier right has consented to the registration.
Section 5(4) of the Act sets out that a trade mark shall not be registered if, or to the extent that, its use in the UK is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; and the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark, or date of the priority claimed for the application.
The law of passing off protects unregistered rights associated with a business. In order to establish passing off, it is necessary to show that there is:
- goodwill or reputation;
- misrepresentation leading to deception or a likelihood of deception; and
- damage resulting from the misrepresentation.
Therefore, the main question for the court was whether the registration of the Trade Mark should be declared invalid on the basis that there had been passing off of the Defendant's Signs.
Was there passing off?
The judge found that the Defendant's services carried on under and/or by reference to the Defendant's Signs were sufficient to generate goodwill in the Defendant's Signs by the time the Claimant first marketed her course under the Trade Mark on 7 September 2019.
The Claimant had volunteered in her cross-examination that it was likely that any confusion arising would work both ways: i.e. the Defendant's customers looking for her services might find the Claimant's services and get confused, and the Claimant's customers looking for her services might find the Defendant's services and get confused. Therefore there was misrepresentation, as it was inevitable that someone might think that the Trade Mark was connected with the Defendant.
The judge did not have to decide whether there had been damage, as the Claimant's position was that, if the Defendant satisfied the court that there was goodwill and misrepresentation, then the Claimant accepted that there was damage and invalidity of the Trade Mark under Section 5(4) of the Act, and also admitted liability under the law of passing off.
The judge declared the Trade Mark invalid in accordance with section 47(2)(b) of the Act, held that the Defendant's counterclaim in passing off succeeded, and dismissed the Claimant's claim for infringement.
This case highlights that having a registered trade mark does not offer absolute protection against another business using that trade mark. If that business was using the trade mark before it was registered, and can establish that a) goodwill had been generated, b) there was misrepresentation leading to others believing that the trade mark was connected to their business, and c) they suffered damage as a result of the misrepresentation, then they could be successful in having the trade mark declared invalid, and be entitled to be paid damages, as a result of passing off.
If you have any queries about the protection offered by intellectual property rights, including trade marks, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.