Marriott has lost its appeal against a Hearing Officer’s decision to partly invalidate its UK trade mark for DELTA for certain services in classes 35 and 43.
The application to revoke the mark was filed by Delta Air Lines, based mainly on its earlier EU trade mark for DELTA, registered for “air transportation services” in class 39.
Marriott had argued that although the marks in issue were identical, the services were sufficiently different for confusion to be avoided.
The appeal concerned three main issues: similarity under Section 5(2)(a), the existence of a link and unfair advantage under Section 5(3) and the interpretation of a coexistence agreement between the parties.
Similarity of services
In his judgment, Deputy High Court Judge Mr Ian Karet said that the Hearing Officer was entitled to find that “hotel services; resort lodgings; reservations for hotel accommodations” in class 43 had a fairly low degree of similarity to the earlier mark based on complementarity. He explained:
“[The Hearing Officer] applied the relevant case law … to her evaluation of the way the relevant services are sold to and used by consumers and whether there is a complementary relationship. The test she applied was correct, and it led to her finding of complementarity.”
Marriott had argued that the Hearing Officer should not take judicial notice of matters such as how the services are sold, but the judge described Marriott's view of the scope of judicial notice as “too restrictive”.
Link and unfair advantage
Turning to Section 5(3), Mr Karet found that the Hearing Officer was entitled to find a link between some of the services and that Marriott would be likely to obtain an unfair advantage as a result.
The Hearing Officer had identified this as a case where the use would be unfair even though there was no proof of a subjective intent to exploit the reputation and goodwill of the earlier mark:
“The Hearing Officer identified the unfairness as resulting from a consumer’s belief that the purchased services are those of another or from the economic advantage gained by using a mark familiar to consumers as a result of the earlier mark owner promoting the mark and from which the later mark benefits without recompense. This is more than a simple economic gain by the owner of the later mark. This was a conclusion she was entitled to reach.”
Agreement
Finally, Marriott argued that a 2015 agreement between the parties concerning the DELTA mark was worldwide in scope and provided consent to registration of the mark in the UK – or that the registration was made with due cause.
But the judge said that the agreement was intended to operate as a coexistence agreement “principally in Hong Kong and the PRC” and it did not provide consent to registration. Moreover, the Hearing Officer was entitled to find that Marriott had not shown due cause, having considered all the circumstances including the lack of business using the DELTA mark in the UK.
What does this mean?
As we have noted before, parties face a high hurdle to overturn Hearing Officer decisions, as appeals are reviews rather than rehearings. It is therefore vital to set out your case as fully and carefully as possible at first instance.
This judgment is also notable for its discussion of judicial notice (what might be called common-sense facts) in trade mark disputes. In this case, for example, the Hearing Officer treated “passenger airline services” as a subset of “air transportation services” and the judge found no problem with that, saying: “In considering a likelihood of confusion she was entitled to take judicial notice of matters within her experience.”
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com