High Court ruling in trade mark and passing off dispute over TITANIC marks

The High Court has made a number of rulings in a complex factual case involving competing claims to trade marks including the name “Titanic”. The claimant owned a luxury spa business in Huddersfield under the name “Titanic Spa”. The defendants operated a well-known hotel under the name “Titanic Hotel Liverpool”.

Carr J held that the claimant’s TITANIC SPA registered trade mark had been infringed by Titanic Liverpool. Titanic Liverpool could not rely on the own name defence under section 11(2) of the Trade Marks Act 1994 for past acts of infringement. However, the steps which it had taken (including certain rebranding) and those it proposed to take would avoid a likelihood of further confusion, and it could rely on section 11(2) as a defence to future acts of infringement. The judge reached a similar conclusion in relation to passing off.

The judge allowed the defendants’ appeal from the hearing officer’s decision revoking their trade mark for TITANIC QUARTER on the basis of non-use. He also ruled that they should be granted a declaration that they were legitimately entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” in relation to hotels in the UK.

In this case, the judge had to consider many different issues beginning with whether the hearing officer had erred in relation to her treatment of the late evidence of use, and culminating in ruling on whether a declaration was appropriate. In doing so, he applied established legal principles to the facts in a clear and pragmatic way, taking into account the commercial realities of the situation. (Property Renaissance Ltd T/A Titanic Spa v Stanley Dock Hotel Ltd T/A Titanic Hotel Liverpool and others [2016] EWHC 3103 (Ch), 2 December 2016.)

Practical Law 9.12.16