Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors [2016] EWHC 3103 (Ch)

Case No IP-2015-000043Case No HC-2016-002154Case No CH-2016-000141[2016] EWHC 3103 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Venue Royal Courts of Justice, Rolls Building, Fetter LaneDate 02/12/2016
London
EC4A 1NL
Before
THE HON MR JUSTICE HENRY CARR
Between
Property Renaissance Limited T/A Titanic SpaClaimantStanley Dock Hotel Limited T/A Titanic Hotel LiverpoolDefendantStanley Dock Properties Limited T/A Titanic Hotel LiverpoolDefendantTitanic Trademark LimitedDefendant(4) Titanic Quarter LimitedDefendantProperty Renaissance Limited T/A Titanic Spa Claimant IP-2015-000043 Defendant HC-2016-002154 Respondent CH-2016-000141- and –(1) Stanley Dock Hotel Limited T/A Titanic Hotel Liverpool (2) Stanley Dock Properties Limited T/A Titanic Hotel Liverpool (3) Titanic Trademark Limited (4) Titanic Quarter Limited Defendants IP-2015-000043 Claimants HC-2016-002154 Claimant HC-2016-002154 Appellant CH-2016-000141 Claimant HC-2016-002154
Roger Wyand QC and Ben Longstaff (instructed by Taylor Wessing LLP) for ClaimantHugo Cuddigan QC and Kathryn Pickard (instructed by Charles Russell Speechlys LLP) for DefendantsHearing Hearing dates: 3, 4 & 7 November 2016
JudgmentIntroduction 1 The issues 12 1. Did the Hearing Officer err in law or in principle in refusing to admit further evidence sought to be adduced by TTL 13 The role of the appellate tribunal 17 Alleged errors of principle Materiality 20 Prejudice to TTL 27 Was an adjournment requested by Titanic Huddersfield?36 2. Should the Hearing Officer have admitted the further evidence?41 3. Should the further evidence be admitted on appeal?43 4. What is a fair specification of services for 115 mark, having regard to the use which has been made of it?45 Legal principles 47 Application to the facts 48 Class 41 54 Class 43 64 5. If the further evidence is not admitted, did the Hearing Officer nonetheless err in law or in principle in ordering revocation of the 115 mark?75 6. Is Titanic Huddersfield’s 423 mark “Titanic Spa” infringed by the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool?76 7. Can Titanic Liverpool rely on the “own name” defence under section 11(2) of the Trade Marks Act 1994?Legal principles 89 Application to the facts 94 8. Is it appropriate to grant injunctive relief to restrain further use of the word “Titanic” by Titanic Liverpool?112 9. Is the mark “Titanic Spa” valid in the light of the 115 mark and/or the 544 mark (“the Titanic Quarter registrations”)?10. Are either or both of the Titanic Quarter registrations infringed by Titanic Huddersfield’s use of the name “Titanic Spa”?114 11. Is Titanic Huddersfield entitled to rely on any goodwill accrued to it in respect of “Titanic Spa” in the event that Titanic Huddersfield’s use of that sign amounts to infringement of the Titanic Quarter marks?127 12. Do the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool amount to passing off?Legal principles 128 Application to the facts 132 13. Should Titanic Belfast and Titanic Liverpool be granted a declaration that they are legitimately entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” and the 544 device mark in relation to hotels in the United Kingdom?138 Conclusion 143

Introduction

[1]This is a battle about trade marks which include the name “Titanic”. Property Renaissance Ltd (“Titanic Huddersfield”) trades under the name “Titanic Spa”. It runs a luxury spa business which is located in an Edwardian former textile mill known as Titanic Mills. Titanic Mills was constructed in 1911 and was so named because of its large size. It is a coincidence that its opening fell in the same year as the launch of the ill-fated ocean liner, the RMS Titanic. Titanic Spa opened in 2005 and has been successful. The turnover of the business in 2015 was £4.8 million. It now offers overnight accommodation in 33 serviced apartments.[2]Titanic Huddersfield is the registered proprietor of UK Trade Mark No. 2572423 for the words “Titanic Spa” (“the Titanic Spa mark”). The Titanic Spa mark was filed on 16 April 2011 and registered on 10 June 2011 in respect of various services in classes of 35, 41, 43 and 44. In March 2015, Titanic Huddersfield brought a claim for infringement of the Titanic Spa mark and passing off in the Intellectual Property Enterprise Court (“the IPEC claim”) against Stanley Dock Hotel Limited and Stanley Dock Properties Limited (“Titanic Liverpool”). Titanic Liverpool operate a well-known and successful hotel under the name “the Titanic Hotel Liverpool”. This hotel opened in June 2014, following promotion from October 2013 onwards. From February 2014 publicity materials included references to a spa in the hotel, and from April 2014 such materials referred to the spa as the “T-Spa”. The T-Spa did not open until November 2014 and was formally launched in March 2015.[3]By letters sent in August 2014 and November 2014, Titanic Huddersfield complained about use of the name “T-Spa” at the Titanic Hotel Liverpool. From December 2014, the spa was rebranded as “the Spa”. A further rebranding exercise was completed in April 2016 and the spa was renamed “Maya Blue Spa”. However, Titanic Huddersfield maintains its claim against Titanic Liverpool in the IPEC claim, and complains about use of “Titanic” in the name of the hotel.[4]Titanic Liverpool operates its hotel under licence from Titanic Trademark Limited and Titanic Quarter Limited (“TTL” and “TQL”, collectively “Titanic Belfast”). Each of these companies is the registered proprietor of certain trade marks in respect of or including the words “Titanic Quarter”. Certain of these trade mark registrations pre-date the opening of Titanic Spa by Titanic Huddersfield, and pre-date the registration of the Titanic Spa mark. The driving force behind Titanic Belfast is Mr Patrick Doherty, who, through these and other companies, was responsible for the redevelopment of Titanic Quarter in Belfast.[5]Titanic Quarter is the biggest property development scheme ever undertaken in Northern Ireland and is one of Europe’s largest regeneration schemes. The Titanic Belfast and Titanic Liverpool companies are under the substantial ownership and control of Mr Doherty. The Titanic Hotel Liverpool was so named because of Mr Doherty’s desire to expand the Titanic brand into other areas with a connection to the RMS Titanic. Liverpool was an obvious choice, as the location of the headquarters of the White Star Shipping Line, and the city in which the Titanic was first registered.[6]In January 2015, a few months prior to issue of the IPEC claim, Titanic Huddersfield filed an application in the UK Intellectual Property Office for cancellation for non-use of UK trade mark no. 2201115 “Titanic Quarter” (“the 115 mark)”. The 115 mark was filed on 24 June 1999 and registered on 25 July 2003. It was registered in respect of a variety of services in classes 36, 41, 42 and 43. By Decision O-127-16 dated 8 March 2016, the Hearing Officer, Ms. Ann Corbett, concluded that the application for cancellation of the 115 mark succeeded in full (“the UKIPO Decision”). Subject to any successful appeal, she decided that the 115 mark would be revoked from 26 July 2008 under section 46(1)(a) of the Trade Marks Act 1994.[7]TTL, the proprietor of the 115 mark, has appealed to the High Court against the decision of the Hearing Officer not to admit certain evidence which was filed shortly before the hearing. Alternatively, it contends that the relevant evidence should be admitted on appeal. Further, and whether or not the further evidence is admitted, it appeals the Hearing Officer’s finding that the 115 mark should be revoked for non-use (“the Appeal”).[8]In July 2016 Titanic Belfast and Titanic Liverpool issued a claim in the High Court for infringement of the Titanic Quarter marks by Titanic Huddersfield, by reason of its use of the name “Titanic Spa” (“the High Court claim”). As well as alleging infringement of the 115 mark, there is also an allegation of infringement of European Union Registered Trade Mark No. 3,118,544 (“the 544 mark”). The 544 mark is registered for goods and services in classes 16, 36, 37, 41 and 43, with a filing date of 21 March 2003 and the date of registration of 19 August 2004. It is a device mark which includes prominent use of the word “Titanic” as shown below:[9]In January 2015 Titanic Huddersfield also commenced an action in the EU Intellectual Property Office to revoke the 544 mark for non-use. However, that action has not yet been heard, and it is common ground that I shall proceed on the basis that the 544 mark is valid.[10]At a hearing on the 28 July 2016, Norris J ordered that the IPEC claim, the High Court claim and the Appeal should all be heard together. This judgment deals with all of those proceedings.[11]It will be seen from this complex procedural history that Titanic Huddersfield seeks to injunct Titanic Liverpool from continuing to use the word “Titanic” as part of the name of its hotel, and Titanic Belfast and Titanic Liverpool seek to injunct Titanic Huddersfield from continuing to use the word “Titanic” as part of the name of its spa. Captain Arthur H Rostron, who attempted to rescue survivors from the wreck of the RMS Titanic, wrote in his log that:
“Icebergs loomed up and fell astern and we never slackened. It was an anxious time with the Titanic’s fateful experience very close to our minds.”
This seems a reasonable description of the commencement, continuance and possible outcome of this dispute. Both sides have valuable businesses, and this is very high risk litigation which puts in jeopardy the goodwill which Titanic Huddersfield and Titanic Liverpool have built up.

The issues

[12]The following is a brief list of issues in the three sets of proceedings. Depending on the conclusions that I reach, it may not be necessary to decide all of these issues: i) Did the Hearing Officer err in law or in principle in refusing to admit further evidence sought to be adduced by TTL? ii) If so, should that evidence have been admitted? iii) If not, should that evidence now be admitted on appeal? iv) If the further evidence is admitted, what is a fair specification of services for the 115 mark, having regard to the use which has been made of it? v) If the further evidence is not admitted, did the Hearing Officer nonetheless err in law or in principle in ordering revocation of the 115 mark? vi) Is Titanic Huddersfield’s Titanic Spa mark infringed by the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool? vii) If so, can Titanic Liverpool rely on the “own name” defence under section 11(2) of the Trade Marks Act 1994? viii) If not, is it appropriate to grant injunctive relief to restrain further use of the word “Titanic” by Titanic Liverpool? ix) Is the Titanic Spa mark valid in the light of the 115 mark and/or the 544 mark (“the Titanic Quarter registrations”)? x) Are either or both of the Titanic Quarter registrations infringed by Titanic Huddersfield’s use of the name “Titanic Spa”? xi) Is Titanic Huddersfield entitled to rely on any goodwill accrued to it in respect of “Titanic Spa” in the event that Titanic Huddersfield’s use of that sign amounts to infringement of the Titanic Quarter marks? xii) Do the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool amount to passing off? xiii) Should Titanic Belfast and Titanic Liverpool be granted a declaration that they are legitimately entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” and the 544 device mark in relation to hotels in the United Kingdom?[1]Did the Hearing Officer err in law or in principle in refusing to admit further evidence sought to be adduced by TTL?[13]The Hearing Officer set out the procedural aspects of the application before her at [4] to [11] of the UKIPO Decision. In brief summary, TTL filed the first witness statement of John Nicholl on 8 June 2015 and requested an extension of time to allow it to file other evidence. That request was refused by the IPO. Titanic Huddersfield was then allowed until 22 September to file evidence in answer. On 22 September it requested an extension of time, which was granted until 3 November. On 3 November Titanic Huddersfield filed written submissions, but chose not to file any evidence. By a letter dated 10 November, the IPO advised the parties that the evidence rounds were considered complete.[14]On 1 December 2015, Charles Russell Speechlys (“CRS”), who had recently been appointed as TTL’s solicitors, requested reconsideration by the IPO, to allow it to file evidence in reply to the submissions made by Titanic Huddersfield. The letter stated that CRS had only recently been appointed as representatives for TTL and requested until 18 January 2016 to file evidence in response, being a second statement from Mr Nicholl. It acknowledged that this would result in a postponement of the hearing, which had been fixed for 18 January 2016.[15]By a further letter dated 23 December 2015 CRS requested transfer of the proceedings to IPEC or alternatively for permission to file further evidence in the form of a witness statement from Mr Harvey, which had already been filed in the IPEC claim. No response was received at this stage from Titanic Huddersfield. On 13 January 2016 CRS sent a further letter requesting admittance of the second witness statement of John Nicholl and exhibits thereto dated 13 January 2016, which accompanied that letter.[16]At the hearing on 18 January 2016, Titanic Huddersfield did not object to the admittance of the evidence of Mr Harvey and did not seek to file any evidence in response to it. It did, however, object to admittance of the second witness statement of Mr Nicholl, which the Hearing Officer refused to allow into the proceedings.

The role of the appellate tribunal

[17]I am not conducting a rehearing of the case before the Hearing Officer, but rather, a review of her decision. The decision to refuse to admit further evidence was a multifactorial assessment and the approach to be applied in such cases, appeals from decisions of the Registrar, was set out by Robert Walker LJ in Reef Trade Mark [2002] EWCA Civ 763; [2003] RPC 5 at [28]:
“In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct material error of principle.”
[18]A decision refusing to admit further evidence into proceedings is an exercise of discretion. The discretion to admit late evidence is provided by Rule 38(8) of the Trade Mark Rules 2008/1797, which provides that:
“The registrar may, at any time, give leave to either party to file evidence upon such terms as the registrar thinks fit.”
[19]In Bastionspark LLP and others v The Commissioners for Her Majesty’s Revenue and Customs [2016] UKUT 425 (TCC) Nugee J summarised the approach of the appeal court in such cases at [20]:
“…an appellate court or tribunal can only interfere where the lower court or tribunal has “exceeded the generous ambit within which reasonable disagreement is possible” (G v G (Minors) [1985] 1 WLR 647 at 652 per Lord Fraser); or where “the judge has either erred in principle in his approach, or has left out of account, or taken into account, some feature that he should, or should not, have considered, or that [the exercise of] his discretion is wholly wrong because the court is forced to the conclusion that he has not balanced the various factors fairly in the scale” (Roache v News Group Newspapers Ltd (1992) [1998] EMLR 161 at 172 per Stuart Smith LJ;”
Alleged errors of principle

Materiality

[20]The first factor that the Hearing Officer identified for consideration when dealing with a request to file further evidence was the materiality of the evidence; UKIPO Decision at [28].[21]The only discussion of materiality in the UKIPO Decision is at [31]. Having stated that there would be a significant burden on Titanic Huddersfield, and a significant delay in the proceedings if the evidence was admitted, the Hearing Officer said:
“That said, the burden and delay has to be weighed against other factors such as the materiality of the proposed evidence which is sought to be filed. In this case, I note that Mr Baran submitted at the hearing that the registered proprietor was satisfied that its other evidence i.e. the first statement of Mr Nicholl along with the now admitted witness statement of Mr Harvey, is sufficient to show that genuine use had been made of the mark within the relevant period. Taking all matters into account, I refused to admit the further witness statement of Mr Nicholls.”
[22]Mr Cuddigan QC, on behalf of TTL, made several criticisms of the Hearing Officer’s approach to materiality. First, the Hearing Officer ought to have asked the question whether the evidence that TTL sought to file was likely to make a material difference to the outcome of the cancellation application. She neither asked, nor answered, this question. As is customary in Registry decisions, the Hearing Officer set out a very detailed summary of the evidence which had been filed in the proceedings at [36] to [69]. However, there is no summary given in the UKIPO Decision of the contents of the second statement of Mr Nicholl or its exhibits. When considering the materiality of this evidence, the Hearing Officer needed to discuss its contents and explain why she considered that it was not sufficiently material.[23]I agree with this criticism. There is no doubt that the second statement of Mr Nicholl shows use during the relevant period of “Titanic Quarter” as a trade mark. Yet the Hearing Officer revoked the 115 mark in its entirety. Mr Wyand QC, who appeared on behalf of Titanic Huddersfield, very sensibly accepted that if the further evidence is admitted, then the Appeal has to be allowed in part, albeit with a reduced specification of services.[24]Secondly, the Hearing Officer said at [31] that Dr Stuart Baran, who appeared on behalf of TTL, had stated that the evidence already filed in the proceedings was “sufficient to show that genuine use had been made of the mark within the relevant period.” This implies that he accepted that the further evidence was unnecessary. This formed the sole basis for the decision of the Hearing Officer that it was not material. However, this is not an accurate account of what was said by Dr Baran. At page 17 of the transcript, the Hearing Officer asked whether he was saying that the fresh evidence was materially determinative. He replied:
“I certainly say that it is material. It is a matter for you whether it is determinative or not. I will not concede this cancellation action if this evidence is not allowed in.”
[25]It would have been very surprising if Counsel had conceded that the 115 mark should be revoked if the further evidence was not admitted. He was certainly not required to make any such concession in order to show that the further evidence was material. He made clear that the evidence was material to the outcome of the application. It was then incumbent on the Hearing Officer to form her own view of whether the further evidence was likely to be material, which she did not do.[26]In my judgment, the Hearing Officer made material and significant errors of principle when considering the materiality of the further evidence. I should mention that the Hearing Officer was faced with evidence that she had only seen on the morning of the hearing, which must have placed her in a difficult position. Nonetheless, the UKIPO Decision is a reserved judgment, which was issued some weeks after the hearing, and there was the opportunity for a full explanation of why the evidence had been excluded.

Prejudice to TTL

[27]The second and third factors identified by the Hearing Officer at [28], when considering whether to admit late evidence, were as follows:
“The justice and fairness of subjecting the opposite party [Titanic Huddersfield] to the burden of evidence in question at that stage of the registry proceedings, including the reasons why the evidence was not filed earlier; Whether the admission of the additional evidence would prejudice the other party [Titanic Huddersfield] in ways that cannot be compensated for in costs (e.g. excessive delay).”
[28]Mr Cuddigan submits that there is a notable omission from the list of relevant factors, namely any consideration of the prejudice to the party applying for admission of the further evidence, if it is excluded. This raises a point of some importance in relation to Registry practice.[29]The factors identified by the Hearing Officer at [28] of the UKIPO Decision are set out at [4.8.5] of the Trade Marks Manual. The Manual cites in support a decision of Mr Geoffrey Hobbs QC sitting as an Appointed Person in Lappet Manufacturing Co Ltd v Yosif Abdulrahman Al-Bassam Trading Establishment BL O/467/02 (“Lappet Manufacturing”). In the Lappet Manufacturing case, Mr Hobbs decided, amongst other things, that the Hearing Officer had erred in refusing to admit evidence which was not confined to matters strictly in reply. Where both parties were apparently willing for the evidence in question to be taken into account, the Registrar was not obliged to exclude it from consideration. On the contrary the Registrar could rectify the irregularity under Rule 13(11) even if no formal request was made.[30]At [37] onwards, Mr Hobbs considered the approach of the Registrar if there was an objection to the admissibility of such evidence. At [38] he said:
“In a case such as the present where rectification of the procedural irregularity is required, I think it is necessary to consider: (1) the materiality of the evidence in question to the issues that the Registrar has to determine (2) the seriousness of the irregularity which the Registrar is being asked to rectify; and (3) the justice and fairness of subjecting the opposite party to the burden of the evidence in question at that stage of the registry proceedings. These are matters of degree. Over and above that, a judgment must be made at their relative weight in the context of the given case.”
These are matters of degree. Over and above that, a judgment must be made at their relative weight in the context of the given case.”[31]I do not consider that Mr Hobbs intended to exclude consideration of prejudice to the party applying to admit further evidence. It is clear from [39] of his decision that, of course, he was fully aware of the need to balance all relevant factors, including prejudice to the applicant if evidence is not admitted. He indicated that Rule 13(11) might result in permission for the filing of evidence that would not be admitted if it had been tendered for the first time on appeal to the High Court. This recognises that it is easier to rely on further evidence, even if out of time, if served before the start of the hearing at first instance. He then stated:
“That is entirely consistent with the overriding objective of enabling the Registrar to deal with cases justly. It also accords with the policy underlying the restrictive approach to the admissibility of fresh evidence on appeal…”
[32]At [44] of his decision, Mr Hobbs stressed the need to balance all relevant circumstances:
“In judging the relative weight of these considerations in the context of the present case it was appropriate to have regard to the unsatisfactory way which the opponent had brought the evidence in question before the Registrar, but necessary to recognise that this was not the whole story. Examination of the late evidence indicates that the matters addressed in it ought not to be left out of account when assessing the acceptability of the applicant’s request for registration of the mark in issue …”
[33]It was common ground that the overriding objective applies to proceedings before the Registrar. This includes the obligation on the tribunal to deal with cases justly. This means that consideration of prejudice to both parties, not just to one of them, must be considered when deciding whether further evidence should be admitted or excluded.[34]In my judgment, the Registrar should primarily consider the following factors when deciding on the admissibility of late evidence, although the weight to be attached to each of them will vary from case to case: i) The materiality of the evidence in question to the issues that the Registrar has to determine; ii) The justice and fairness of subjecting the opposite party to the burden of the evidence in question at the stage that the registry proceedings have reached, including the reasons why the evidence was not filed earlier; iii) Whether the admission of the further evidence would prejudice the opposite party in ways that cannot be compensated for in costs (e.g. excessive delays); and iv) The fairness to the applicant of excluding the evidence in question, including prejudice to the applicant if it is unable to rely on such evidence.[35]In the present case, the Hearing Officer did not consider prejudice to TTL if it was unable to rely on the further evidence. Whilst this is understandable, given that she was following Registry practice, it was nonetheless an error of law and principle.

Was an adjournment requested by Titanic Huddersfield?

[36]At [31] of the UKIPO Decision, the Hearing Officer stated that if the further evidence was admitted it would “delay significantly the final decision in these proceedings as the evidence periods, effectively, would restart.”[37]Had it been the case, as this passage suggests, that Titanic Huddersfield had indicated that it wished to file evidence in answer, and that an adjournment would have been necessary, then this would have been a very powerful factor in favour of refusing to admit the further evidence. However, this was not the case.[38]Mr Ben Longstaff, who represented Titanic Huddersfield at the hearing on 18 January 2016, pointed to the invidious position in which his clients were placed by late service of the evidence, having not had the opportunity to digest it properly. However, he also made clear that he was not asking for an adjournment and would deal with the evidence at the hearing (see pages 19-20 of the 18 January 2016 transcript of the UKIPO proceedings.)[39]This was a sensible way to proceed. The facts set out in second statement of Mr Nicholl related exclusively to use of the 115 mark by Titanic Belfast, in response to the deficiencies identified in the first round of evidence by Titanic Huddersfield. Titanic Huddersfield had put in no evidence by the date of the hearing, and were not asking to do so. It has not served evidence in answer for the purposes of the Appeal, in case I decide to admit the second statement of Mr Nicholl. That statement is 15 pages long. Although it has quite extensive exhibits, the statement identifies the pages of each exhibit relied on and is therefore readily digestible.[40]In summary, Titanic Huddersfield had not indicated to the Hearing Officer that it wished to file further evidence. Therefore, she was incorrect to conclude that admission of the further evidence would delay significantly the final decision as the evidence periods would need to restart. The Hearing Officer took account of an irrelevant factor, and failed to consider that Titanic Huddersfield was not asking for an adjournment. This was an error of principle.[2]Should the Hearing Officer have admitted the further evidence?[41]The fact that the Hearing Officer made the errors of law and principle identified above does not necessarily mean that her decision to refuse to admit the further evidence was wrong. In considering this question, I have regard to the following factors: i) The evidence was highly material to the issues before the Hearing Officer. It shows trade mark use within the relevant period, of (at least) a number of services within the specification. Yet the 115 mark was revoked in respect of all services for which it was registered. ii) There was some prejudice to Titanic Huddersfield if the further evidence was admitted. It had only been served a few days before the hearing, and Counsel would have had a limited time to consider it. On the other hand, the evidence is easy to follow and it consists of facts within the knowledge of TTL, to which Titanic Huddersfield did not intend to serve evidence in reply. iii) The evidence could have been served earlier and there was no proper excuse for its lateness. The evidence could have been provided when TTL served its evidence in chief. Further, rather than merely writing in December 2015 to request an extension of time, TTL could have submitted the evidence with that letter. I am aware that CRS had just been instructed, and were busy with other aspects of the case, but it was necessary to prioritise. iv) There was no question of an adjournment if the evidence was admitted, and therefore no question of any delay to the hearing. v) There was very significant prejudice to TTL if the evidence was excluded, in that it stood to lose a valuable registered trade mark. This, in my judgment, outweighs any prejudice to Titanic Huddersfield if the evidence was admitted. vi) Finally, I bear in mind the concern of the Hearing Office that admission of the further evidence would undermine the decision of the IPO in December 2015 to refuse to admit such evidence. However, the decision in January 2016 was not the same. A mere indication that evidence might be filed is much less likely to carry weight than if the evidence is ready and the tribunal is asked to consider its contents.[42]Having regard to all the circumstances, in my judgment, the further evidence should have been admitted, and the Appeal on this issue is allowed.[3]Should the further evidence be admitted on appeal?[43]TTL applies, in the alternative, for permission to adduce the further evidence on appeal. It relies on the decision of Daniel Alexander QC, sitting as the Appointed Person in Gerry Weber International AG v Guccio Gucci SpA O-424-14; [2015] RPC 9 (“Gucci”). In that case, Mr Alexander upheld the Hearing Officer’s decision to refuse to admit further evidence, on the basis that there was no draft of the evidence, and no detail about its contents; [11]. However, he allowed an application to admit further evidence on appeal, which contained considerably greater detail about use of the mark with respect to various categories of goods within the specification; [12]. That evidence had not been before the Hearing Officer.[44]The present case differs from Gucci in that the second statement of Mr Nicholl was before the Hearing Officer. If I had decided that the Hearing Officer had not made an error of law or principle in refusing to admit the further evidence which had been served at first instance, then I would have had no grounds for admitting it on appeal, where the test for admissibility is more difficult to satisfy. Mr Cuddigan described this aspect of the Appeal as a “belt and braces” approach, and accepted that if I decided that the evidence should have been admitted at first instance, he did not need to pursue this.[4]What is a fair specification of services for the 115 mark, having regard to the use which has been made of it?[45]On the basis that the second statement of Mr Nicholl would be allowed in (which was not conceded), Titanic Huddersfield set out in its written Closing Submissions the maximum specification which, it claimed, should be allowed for the 115 Titanic Quarter mark. No amendments are proposed in respect of class 36, however certain amendments were suggested in respect of classes 41 and 43.[46]There is no real dispute that, in the light of all the evidence now before the Court, the 115 mark should not be revoked for the classes of services set out above. In particular, it is conceded, or alternatively I find, that there has been use of the mark for all of the services for which it is registered in class 36, and at least partial use within classes 41 and 43. The question is to what extent, if at all, do the specifications in classes 41 and 43 require amendment.

Legal principles

[47]I summarise the relevant principles to be applied, as follows: i) The principles to be applied when considering whether there has been genuine use were summarised by Arnold J in Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] ETMR 31 at [51]. This was set out by the Hearing Officer at [34] of the UKIPO Decision. ii) Genuine use of a trade mark can occur when that mark is used alongside other trade marks or signs; Castellblanch SA v OHIM (Case T-29/04) [2006] ETMR 61; Specsavers International Healthcare Ltd and others v AsdaStores Ltd [2012] EWCA Civ 24; [2012] FSR 19 (“Specsavers”). iii) Where the trade mark proprietor has made genuine use of the mark in respect of some goods or services covered by the general wording of the specification, and not others, it is necessary for the court to arrive at a fair specification in the circumstance, which may require amendment; Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch); [2014] ETMR 57 (“Thomas Pink”) at [52]. iv) In cases of partial revocation, pursuant to section 46(5) of the Trade Marks Act 1994, the question is how would the average consumer fairly describe the services in relation to which the trade mark has been used; Thomas Pink at [53]. v) It is not the task of the court to describe the use made by the trade mark proprietor in the narrowest possible terms unless that is what the average consumer would do. For example, in Pan World Brands v Tripp Ltd (Extreme Trade Mark) [2008] RPC 2 it was held that use in relation to holdalls justified a registration for luggage generally; Thomas Pink at [53]. vi) A trade mark proprietor should not be allowed to monopolise the use of a trade mark in relation to a general category of goods or services simply because he has used it in relation to a few. Conversely, a proprietor cannot reasonably be expected to use a mark in relation to all possible variations of the particular goods or services covered by the registration. Maier v Asos Plc [2015] EWCA Civ 220; [2015] FSR 20 (“Asos”) at [56] and [60]. vii) In some cases, it may be possible to identify subcategories of goods or services within a general term which are capable of being viewed independently. In such cases, use in relation to only one subcategory will not constitute use in relation to all other subcategories. On the other hand, protection must not be cut down to those precise goods or services in relation to which the mark has been used. This would be to strip the proprietor of protection for all goods or services which the average consumer would consider to belong to the same group or category as those for which the mark has been used and which are not in substance different from them; Mundipharma AG v OHIM (Case T-256/04) ECR II-449; EU:T:2007:46. Application to the facts[48]There are several initial points to note before considering the detailed specifications. First, it is common ground that, pursuant to section 46(3) of the Trade Marks Act 1994, the question is whether there has been genuine use between January 2010 to January 2015. This is because, even if there has been five years of non-use, a registered proprietor can nonetheless overcome the objection by recommencing such use.[49]Secondly, an issue between the parties is whether the mark “Titanic Quarter” has merely been used as geographical indication, rather than an indication of origin. As to this, it is important to note that “Titanic Quarter” was not originally the name of the location where the development was proposed to be situated, which is Queens Island. In February 1999, the proposed development, which was originally to be called “Titanic Park” was renamed “Titanic Quarter” by Harland and Wolff Holdings Plc, which, at the time, was involved in the project. Until then, there is no evidence that the phrase was in use at all.[50]Thirdly, it is possible that use of the mark “Titanic Quarter” has been entirely as a geographical indication. Such use would not be genuine trade mark use. However, if the proprietor can show some genuine use within the relevant period, that may well be sufficient to defeat the objection.[51]Fourthly, when considering the detail of the specifications it is necessary not to lose sight of the overall effect of the evidence now before the Court. The evidence shows that a very large development had been open for business during the relevant period following very substantial investment, under the name “Titanic Quarter”, which contains a number of different businesses, including hotels, museums, exhibitions, restaurants and residential accommodation.[52]Fifthly, there has undoubtedly been use of “Titanic Quarter” as a trade mark, for example, in the stylised form shown in the 544 device mark. The mark “Titanic Quarter” has a substantial reputation and goodwill. The question is whether there has been genuine use in relation to the services which remain in dispute.[53]I will now consider those services within classes 41 and 43 which remain in dispute.

Class 41

[54]Current class 41 specification: Theme parks; business parks; amusements; educational services; information services; provisions of recreation activities and facilities; provision of cultural activities and facilities; provision of exhibitions; production of shows; but not including any such services relating to the motion picture film Titanic[55]Titanic Huddersfield’s proposed amendment: Theme parks; business parks; amusements; provision of information relating to education, educationalservices programmes; information services; provisions of recreation activities and facilities; provision of information relating to cultural activities and facilities; provision of conference exhibitions, and meeting facilities; production of shows; but not including any such services relating to the motion picture film Titanic[56]Titanic Huddersfield submits that “theme parks”, “amusements”, “provision of recreation activities and facilities” and “provision of cultural activities and facilities” be deleted and replaced by “provision of information relating to cultural activities”. In response, TTL relies upon the evidence in the second statement of Mr Nicholl at [37] – [48]; and Exhibits JN17 to JN21. Mr Nicholl explains the use that TQL has made of the mark in relation to both hosting and organising a variety of amusements, theme parks recreational and cultural events.[57]At [37] – [39] Mr Nicholl states that TQL has licensed the use of land within the Titanic Quarter development and provided facilities for theme parks and amusements such as Funderland Amusement Park in October 2014 and Circus Vegas in April 2014. Pages 2-3 of Exhibit JN17 are screenshots from TQL’s Facebook page showing a poster advertising Circus Vegas in April 2014. Page 3 shows the Titanic Quarter mark in stylised form in a number of places.[58]At [44] Mr Nicholl explains that every year since 2007 the Titanic Quarter development has hosted a 10km run known as the “Titanic Quarter 10K” and the “TQ10K”. TQL has been, and is, closely involved in the organisation and promotion of the event. At Exhibit JN17 there are examples, within the relevant period, of promotion of the run under and by reference to the Titanic Quarter trade mark. See for example Trial Bundle E3/17/1710 and 1711. Page 1716 of Trial Bundle E3 includes a photograph from the Irish News showing a runner with a running number which prominently displays the Titanic Quarter mark.[59]At [46] Mr Nicholl gives evidence about the “Titanic Quarter Cycling Club” which since 2014 has arranged events within the Titanic Quarter development. He explains that in 2014, a director of TTL approved and consented to the use of the “Titanic Quarter” mark in the cycling club’s name and logo, as shown in Exhibit JN 22.[60]At [47] Mr Nicholl explains that the Titanic Quarter development has hosted a musical event called “Proms in the Park” annually since 2012 and that TQL and Titanic Belfast Ltd are involved in the organisation of the event. In addition to providing the location for the event TQL is responsible for arranging and providing essential services, including utilities, access and traffic management. The Titanic Quarter mark is and has been used on signage and on information leaflets produced for the event in 2012 which were sent to all ticketholders for the event; Exhibit JN22.[61]There is also evidence of use of the mark in relation to the provision of exhibitions, for example in Mr Nicholl’s first statement at [7] and Mr Harvey’s first statement at [21] - [22]. The only issue is whether the specification should be limited to “conference exhibitions”. I consider that this is too specific, and it is unnecessary to cut down the specification to the precise services for which the mark has been used.[62]Titanic Huddersfield submits that “educational services” should be amended to the “provision of information relating to education, educational programmes”. However, Mr Nicholl’s evidence at [41] of his second statement is that employees of Titanic Quarter Ltd have delivered lectures at Ulster University since 2006. In particular, he refers to a lecture given in October 2013 by Mr Eyre, the slides for which are at Exhibit JN18 and show extensive use of the “Titanic Quarter” mark. These are educational services, and not just information about such services.[63]Mr Nicholl was cross-examined, but none of this evidence was challenged. In my judgment, this shows genuine use of the Titanic Quarter trade mark in respect of the disputed services in class 41. I consider that the average consumer would fairly describe the services considered above in terms of the current specification. I do not consider that the specification requires amendment.

Class 43

[64]Current class 43 specification: Provision of accommodation; hotel services; provision of food and drink; restaurant services; cafes; snack bars; fast food bars[65]Titanic Huddersfield’s proposed amendment: Provision of accommodation; hotel services; provision of food and drink in connection with the letting of meeting rooms; restaurant services; cafes; snack bars; fast food bars[66]Titanic Huddersfield’s alternative proposal: Rental of short term accommodation excluding any ancillary services, hotel services or serviced short stay accommodation[67]As to provision of accommodation, at [51] - [52] of his second statement, Mr Nicholl explains that a variety of accommodation services are provided under the Titanic Quarter mark. In particular, he refers to the residential building known as “the Arc” where flats and retail units are let under the Titanic Quarter mark. He explains that in addition to providing rental accommodation of six months duration or more, rental accommodation is provided for shorter periods of two or three months. He states that licences are also granted for periods of one month on a rolling basis, terminable on two weeks’ notice.[68]Furthermore, temporary holiday or business stay accommodation is provided under the Titanic Quarter mark by SAIB (Serviced Apartments in Belfast) and other long-term lease holders of flats in the Arc with TQL’s consent, which can be withdrawn if there is likely to be damage to the reputation of the mark. Exhibits JN 12 and JN 24 show evidence of such use.[69]In my judgment, it is not necessary to delete “provision of accommodation” from the specification of services in class 43. Nor is it necessary to amend the specification to “rental of short term accommodation excluding any ancillary services hotel services or serviced short stay accommodation”. This is too narrow, would not be used as a fair description by the average consumer, and fails to cover the totality of the services in this category for which the mark has been used.[70]As to “hotel services”, I agree with Mr Wyand’s submission that much of the use relied upon by TTL relates to use of the mark in connection with the development of hotels, and would be better described as the provision of hotel facilities in class 35 (T2/144/7-11). However, at [20] of his first statement, Mr Harvey explains that the Premier Inn has consent to use the name Titanic Quarter as a lessee. This is further elaborated by the second statement of Mr Nicholl, who explains at [56] that a 25 year lease was signed by Premier Inn on 18 June 2010 and that the hotel incorporates the Titanic Quarter mark, as shown in Exhibit 9 to Mr Harvey’s first statement, with the consent of TQL.[71]Exhibit 9 to Mr Harvey’s first statement is a screenshot from the Premier Inn website which contains prominent reference to “Belfast Premier Inn Titanic Quarter Hotel". It also refers to "Premier Inn Belfast Titanic Quarter". The address of the hotel is given as 29 Queens Road, Belfast.[72]Titanic Huddersfield claims that this is not use of the Titanic Quarter mark as a brand, but rather as a mere geographical indication of the location of the hotel. During cross-examination, Mr Wyand handed up certain screenshots from the Premier Inn website showing various hotel locations. Under "Hotels in Northern Ireland” are listed “Belfast City Cathedral Quarter”, “Belfast City Centre” and “Belfast Titanic Quarter". When seen in that context “Titanic Quarter" is a mere indication of the location of the hotel.[73]However, the screenshot at Exhibit 9 appears to me to be a different type of use, namely use by Premier Inn of “Titanic Quarter” as a trade mark. In reaching this conclusion I take into account the initial points that I set out, prior to considering the detail of the specifications, and my impression of how the average consumer would view this use, in circumstances where “Titanic Quarter” is an invented phrase, and has become a well-known brand for many different types of services.[74]In conclusion, I consider that the specification of services for the 115 mark in class 43 is fair and does not require any amendment. Accordingly, and to the extent indicated above, this appeal is allowed.[5]If the further evidence is not admitted, did the Hearing Officer nonetheless err in law or in principle in ordering revocation of the 115 mark?[75]Since I have decided to admit further evidence, this question does not arise. Nonetheless, as the issue may be relevant to costs, either at first instance or on Appeal, I note that the evidence originally served by the trade mark proprietor was noticeably lacking in detail, and the second statement of Mr Nicholl was crucial to my decision to allow the Appeal.[6]Is Titanic Huddersfield’s Titanic Spa mark infringed by the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool?[76]Titanic Huddersfield complains about all use of the word “Titanic” by Titanic Liverpool in relation to the hotel. This includes use of the signs “Titanic”, “Titanic Hotel”, “Titanic Liverpool”, “Titanic Hotel Spa” and “Spa at the Titanic Hotel”. Certain of those uses have ceased since the rebranding referred to above. It is convenient to consider the “Titanic Hotel” sign primarily, in order to test the allegation of infringement.[77]When considering the issue of likelihood of confusion between the mark “Titanic Spa” and the sign “Titanic Hotel”, I shall apply the general approach set out by the Court of Appeal in Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 at [51] – [52]; and in Maier v Asos Plc 2015] EWCA Civ 220; [2015] FSR 20 at [75] – [76]. I shall also have regard to the fact that “wrong way round” confusion, where consumers who have become familiar with the defendant’s sign have then mistaken that sign for the claimant’s mark, is admissible as a matter of law when considering likelihood of confusion under section 10 (2) of the Trade Marks Act 1994; Asos at [79] – [84]. However, such evidence must be assessed with care, together with all other evidence, to determine its probative value.[78]Visually and aurally, there is similarity between the mark and sign, since both contain the word “Titanic”. I do not accept, as alleged by Titanic Huddersfield, that the dominant and distinctive element of the Titanic Spa mark is the word “Titanic”, and that the word “spa” does not add any significant level of distinctiveness to the mark. It is a composite mark, which does not contain any components which are negligible. The mark “Titanic Spa” conveys a different message to the word Titanic alone. Titanic Liverpool submits, and I accept, that the word “Titanic” has two meanings to the average consumer. The first is RMS Titanic. The second is “gigantic, colossal”. By contrast, the Titanic Spa mark communicates to the average consumer the notion of a business offering spa services, which adds an additional, and different, meaning to the word “Titanic”. I do not make the comparison solely on the basis of an allegedly dominant element.[79]Nonetheless, I consider that there is conceptual similarity between the mark “Titanic Spa” and the sign “Titanic Hotel”. The average consumer would be aware that it is common for hotels to have spas and might therefore believe that goods or services provided under these names come from the same, or economically linked undertakings.[80]If it had not been used, the mark “Titanic Spa” would have some degree of distinctive character, albeit with some descriptive connotation. However, I consider that the mark “Titanic Spa” has an enhanced distinctive character as a result of the use that has been made of it. Therefore, there is deemed to be a greater likelihood of confusion.[81]The Titanic Spa mark is registered, amongst other things, for retail services connected to the sale of beauty products, cosmetics and toiletries in class 35; provision and operation of recreation and sports facilities; provision of swimming pool services; gym and fitness club services; fitness training services, all in class 41; services for providing food and drink, temporary accommodation, restaurant bar and catering services, provision of holiday accommodation, all in class 43; health and beauty spa services; provision of spa treatments and therapies (non-medical); provision of sauna and steam room services and facilities; hydrotherapy; beauty services for skin, hair and nails; facials, all in class 44.”[82]Titanic Liverpool offers services which are identical, or highly similar, to the services for which the Titanic Spa mark is registered, which include accommodation and dining services, and spa, gym, pool and fitness services.[83]In my view, there is a likelihood of confusion, within the meaning of section 10(2) of the Trade Marks Act 1994, between the Titanic Spa mark and the sign “Titanic Hotel”. I reach the same conclusion in relation to use of the sign “Titanic Liverpool”. The average consumer might believe that this is the Liverpool branch of “Titanic Spa”.[84]In addition, there is some evidence of actual confusion, which corroborates my view that there is a likelihood of confusion. Most, although not all of the confusion is “wrong way round” confusion, where members of the public consider that the Titanic Spa in Huddersfield has some connection with the Titanic Hotel Liverpool. Some consumers called Titanic Spa wishing to book a spa treatment package in Liverpool and others mistakenly believed that they had made a booking with the Titanic Hotel Liverpool, rather than Titanic Spa in Huddersfield, probably as a result of making such booking online. Several instances of confusion are set out at [44] of the first witness statement of Amy Burton. A few further instances, of which Titanic Liverpool has become aware, are set out at [60.1] – [60.4] of the witness statement of Ian Wynne. It is my view, on considering the instances of confusion, that the use of the word “spa” at the Titanic Hotel Liverpool, as a part of the name of its health facilities, has contributed considerably to such confusion. Both businesses have been using the name “Titanic” and both have been promoting spas.[85]It was suggested on behalf of Titanic Liverpool that Titanic Huddersfield was causing the confusion complained of because it gave insufficient prominence on its website to its Huddersfield location. It was further suggested that Google searches indicated that some feature of the Titanic Huddersfield website was causing results from Liverpool to be returned far more frequently than other locations. I accept that Titanic Huddersfield could do more to avoid confusion, if it wished, for example by placing a notice on its website that it had no connection with the Titanic Hotel Liverpool. Mrs Burton explained that Titanic Huddersfield did not wish to do this, as it would advertise its rival. This is a question of priorities.[86]However, I do not accept either of the arguments advanced by Titanic Liverpool, both of which suggest that Titanic Huddersfield has caused the confusion that has occurred. In my view, the Huddersfield location is reasonably prominent. Mrs Burton explained that Titanic Huddersfield was not bidding on Titanic Liverpool’s names as keywords, and it was not established that Titanic Huddersfield was seeking to attract customers of Titanic Liverpool to its website.[87]However, it is important to keep these instances of confusion in perspective. In my judgment, they are evidence of some confusion in practice, as a result of simple errors in online booking, caused by use by both parties of the word “Titanic” whilst offering spa services. Since the rebranding of the spa at the Titanic Hotel to “Maya Blue" in April 2016, instances of confusion have decreased very substantially. A likelihood of confusion would, in my view, be easy to avoid if further steps were taken to distinguish Titanic Liverpool from Titanic Spa, which I consider below.[88]For the reasons set out above, I consider that there is a likelihood of confusion between the mark “Titanic Spa” and the signs “Titanic Hotel” and “Titanic Liverpool". The same conclusion applies to the other signs complained of, which additionally include the word “spa".[7]Can Titanic Liverpool rely on the “own name” defence under section 11(2) of the Trade Marks Act 1994? Legal principles[89]Section 11(2) of the Trade Marks Act 1994 provides that:
“A registered trade mark is not infringed by the use by a person his own name … provided the use is in accordance with honest commercial practices.” (“the own name defence”)”
[90]The own name defence applies to both company names and trading names; Asos at [147].[91]The relevant principles in respect of use in accordance with honest commercial practices were set out by Arnold J in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 (Ch); [2009] RPC 9 at [143] – [164]; affirmed on appeal in [2010] EWCA Civ 110; [2010] RPC 16. First, the requirement that the use be in accordance with honest practices constitutes the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor. Secondly, all circumstances should be considered when ascertaining whether or not the use is honest, including whether the defendant can be regarded as unfairly competing with the proprietor of the trade mark. Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices. Fourthly, a likelihood of confusion can be in accordance with honest practices if there is a good reason why such confusion should be tolerated. Finally, whether the defendant ought to have been aware of the existence of substantial confusion or deception is a relevant factor.[92]More recently, the Court of Appeal considered the question of honest commercial practices in the context of an own name defence in Asos at [145] – [160]. It confirmed that the defendant is under a duty to act fairly in relation to the legitimate interests of a trade mark proprietor. This requires a balancing, or reconciliation, of potentially conflicting interests. The court is required to carry out an overall assessment of all the relevant facts and circumstances to determine whether the defendant is competing unfairly. In addition, Kitchin LJ stated at [149]:
“The possibility of a limited degree of confusion does not preclude the application of the defence, however. It all depends upon the reason for that confusion and all the other circumstances of the case.”
[93]An important issue in Maier v Asos was whether it could be said that the defendant (“Asos”) had complied with its duty to act fairly in relation to the legitimate interests of the trade mark proprietor (“Assos”) in circumstances where it had failed to conduct a trade mark search. A majority of the Court of Appeal (Sales LJ dissenting) considered that, having regard to all relevant factors, the own name defence should succeed. Kitchin LJ, giving the majority judgment, set out the circumstances which were particularly material to that case at [159] (i) – (vi). In summary: i) Both parties had adopted their names independently and it had never been the intention of Asos to confuse the public or trade-off the goodwill associated with the business of the trade mark proprietor. ii) Asos did not conduct a trade mark search, and had it done so it would have identified Assos’s international trade mark application. That would have revealed that Assos’s business was directed to and focused upon the supply of specialist cycling wear. When it found out about Assos, Asos did not believe that the cycle wear business would be affected by its online service in the provision of cycle wear, and nor, at the time, did Assos. iii) Over the years, the parties had continued to develop and expand their respective businesses, without changing their essential nature and each had acquired a substantial reputation and goodwill. iv) In 2006, when Asos learned of Assos’s business, they did not anticipate problems in the marketplace and none had arisen. There had been no confusion in practice between their respective goods and services and there was no real likelihood of confusion in practice in the future. v) The reasons for reaching a conclusion of infringement (subject to the own name defence) depended critically upon the need to take account of a hypothetical and notional use of the Assos mark which, on the evidence, Assos had no intention of making. vi) Asos had not taken any steps towards Assos’s business model. On the contrary, it had somewhat belatedly taken steps to make sure that it did not sell cycling-inspired fashion wear. Asos had continued to conduct its business in such a way as not to cause confusion, and had been alert to the need not to take steps which might give rise to a real clash.

Application to the facts

[94]There are several circumstances relied on by Titanic Liverpool which, in my judgment, lend support to the proposition that the use complained of is in accordance with honest commercial practices.[95]First, Titanic Liverpool did not choose its name with any intention of confusing the public, or in any way associating itself with the business of Titanic Huddersfield. It has not tried to do so since the hotel opened in 2014. Titanic Huddersfield originally pleaded that Titanic Liverpool had ridden on the coat-tails of the reputation and distinctiveness of the Titanic Spa mark, and had acted deliberately to create an association between the hotel and the Titanic Spa. This allegation was misconceived, and was abandoned before the trial.[96]Secondly, Titanic Belfast is an entity related to Titanic Liverpool by reason of Mr Doherty’s shared ownership and control. Titanic Belfast has built up a very strong brand in the name “Titanic Quarter”. Moreover, “Titanic Quarter” was registered as a trade mark before Titanic Huddersfield commenced its use. It was natural for Mr Doherty to wish to extend the goodwill in the brand to other parts of the UK, and there was good commercial reason to do so. The Titanic Hotel Liverpool was a natural extension of the brand, given the history of RMS Titanic.[97]Thirdly, there is some distinction between the type of business carried on by Titanic Liverpool and Titanic Huddersfield. Titanic Liverpool runs a large luxury hotel which, amongst its numerous facilities includes a spa. The business of Titanic Huddersfield is as a residential eco-spa where the primary purpose of a visit is to enjoy the spa facilities.[98]Fourthly, Titanic Liverpool has taken steps to minimise the risk of any confusion between itself and Titanic Huddersfield. By a letter dated 7 November 2016, Titanic Liverpool’s solicitors recorded efforts made by Titanic Liverpool to achieve an agreed resolution of this dispute. These efforts comprised: i) Ceasing the use of the name “T-Spa”; ii) Offering to rebrand the spa and agreeing not to use “Titanic Spa” nor the phrase “Titanic Hotel Spa” in relation to its spa facility and not to use the phrase “Spa at the Titanic Hotel” on the hotel website or in any marketing materials; iii) Unilateral rebranding of the spa facility at the hotel to “Maya Blue Spa”; iv) Unilateral steps to ensure that the negative keywords “Titanic Spa” were applied to its ad word campaign so that adverts for Titanic Hotel Liverpool do not appear on Google when consumers search for these words; and v) Offering to add a statement to the Titanic Hotel Liverpool website to the effect that it is not associated with the Claimant or the Titanic Spa, and to provide a link to Titanic Huddersfield’s website.[99]In addition, in the same letter, Titanic Liverpool offered to undertake to remove the word “spa” from its websites and promotional material and to rebrand the facility at the hotel to “the Maya Blue Health and Fitness Centre”.[100]Fifthly, since Titanic Liverpool commenced the acts complained of, Titanic Huddersfield’s business has gone from strength to strength. Mrs Burton’s evidence was that in 2014 and 2015 it enjoyed an occupancy rate of 96%. Mr Wynne gave evidence, which I accept, that he would be exceptionally happy with such average occupancy rates, as the hotel would be effectively 100% full, with no ability to go any further. Therefore, I am not convinced that Titanic Huddersfield’s business has suffered substantial financial loss by reason of such confusion.[101]On the other hand, there are a several circumstances which point in the opposite direction, and lend support to the proposition that the use complained of is not in accordance with honest commercial practices.[102]First, I have referred to the limited distinction between the types of business carried on by Titanic Liverpool and Titanic Huddersfield. However, there is a considerable overlap between these businesses, given that they both promote and offer spa facilities with residential accommodation. The emphasis is different, but the similarity is clear.[103]Secondly, Titanic Liverpool commenced the use complained of in 2014, after Titanic Huddersfield had registered its trade mark and after it had traded under that name for several years.[104]Thirdly, in contrast to the Asos case, there is evidence of actual confusion, although this has very substantially decreased since measures have been taken by Titanic Liverpool to avoid it.[105]Fourthly, Titanic Liverpool’s knowledge of the Titanic Spa trade mark requires careful consideration. Mr Power explained at [29] of his statement that John Nicholl, financial director of TQL, was notified of the Claimant’s application for the registered trade mark “Titanic Spa” in 2011. Although Mr Nicholl has no specific recollection of considering this application, no action was taken by TQL because it did not perceive that there was likely to be confusion between the marks “Titanic Quarter” and “Titanic Spa”.[106]Mr Power further explained at [24] – [25] of his statement that after the name “Titanic Hotel Liverpool” had been selected in early 2013, a Community Trade Mark application for this mark in various classes was made on 10 June 2013. Mr Power understood from his trade mark attorneys that no trade mark searches were requested to be undertaken at the time. He believes that this was because his company already had a trade mark registration for “Titanic Quarter” in the relevant classes of services and they were simply extending the Titanic brand within the UK where the brand was already well known. He states that as the trade mark application was not opposed, there was no reason to suppose that any third party would object to use of the word “Titanic” in the hotel name.[107]In summary, this is a case where trade mark searches had been performed and where the Titanic Spa trade mark application had been discovered in 2011. It might be said that Titanic Liverpool ought to have checked those 2011 searches, given that, in 2013, they were applying for a different trade mark, or ought to have done fresh searches. Had they investigated further, they would have found the business carried on by Titanic Huddersfield, and, in those circumstances, should have appreciated that confusion was likely.[108]On the other hand, the explanation provided by Mr Power is an understandable position for a business to adopt. Titanic Liverpool did not know of the business operated by Titanic Huddersfield, nor, in 2013, did it consider that it had reason to believe that any third party would object to the application for, and use of, its trade mark. It is fair to say that it was somewhat imprudent not to perform new trade mark searches in 2013. However, this is not uncommon. Mrs Burton explained that Titanic Huddersfield had not done any trade mark searches involving the word “Titanic” when it commenced its use, and was not informed about the Titanic Quarter marks when it applied to register “Titanic Spa” in 2011 (T2/226/4-22). In my judgment, this factor is relevant, but not decisive.[109]I consider that the decision on this aspect of the case is finely balanced. Having weighed all of the circumstances, I have reached the view that the own name defence in respect of past acts of infringement should not succeed. There has been confusion, particularly before the spa was rebranded to “Maya Blue” and the steps taken by Titanic Liverpool to prevent such confusion have been somewhat belated.[110]On the other hand, I bear in mind all of the measures taken so far by Titanic Liverpool to avoid confusion, and the offers made to take additional measures. Provided that Titanic Liverpool undertakes to place a prominent notice on its website which makes clear that it has no connection with Titanic Huddersfield, and ceases all use of the word “spa” in connection with its hotel, I consider that the own name defence should succeed in respect of the future. The date from which this distinction will apply will be decided at the form of order hearing.[111]It is my view that if these measures are taken, in addition to the steps taken to date, then the reasonably circumspect average consumer will not be confused. Such future use would, in my judgment, be consistent with the duty to act fairly towards the legitimate interests of Titanic Huddersfield, as the functions of the Titanic Spa mark will not be affected. It will not affect the ability of Titanic Huddersfield to use its brand to attract and retain customers, nor will it affect further legitimate expansion of its business. It will amount to fair competition and will be in accordance with honest commercial practices.[8]Is it appropriate to grant injunctive relief to restrain further use of the word “Titanic” by Titanic Liverpool?[112]Titanic Liverpool submitted that, should its other defences fail, I should refuse to grant an injunction as in the circumstances of this case, it would be disproportionate. Titanic Huddersfield responded that this would be a matter to be discussed after this judgment is handed down, when considering the form of order.[113]It may be that this issue no longer arises, in the light of my conclusion that (subject to the conditions set out above) Titanic Liverpool has a defence under section 11(2) in respect of future use of the signs “Titanic Hotel” and “Titanic Liverpool”. Nonetheless, it may be of some value for me to determine this issue, in case I am wrong in my conclusions about the own name defence, or in my conclusions about passing off. Should either of the parties ask for this issue to be determined, I will do so at the hearing on the form of order in a separate judgment. The parties will need to refer to the relevant authorities, to which I have not yet been taken, including decisions of the Court of Justice in relation to the reasons which justify refusal of injunctions where a registered trade mark has been infringed; and, on the assumption that there is no own name defence, to consider whether any injunction should be qualified by a proviso, in the light of the steps to avoid confusion taken and offered by Titanic Liverpool.[9]Is the mark “Titanic Spa” valid in the light of the Titanic Quarter registrations?[10]Are either or both of the Titanic Quarter registrations infringed by Titanic Huddersfield’s use of the name “Titanic Spa”?[114]It is convenient to consider both of these issues at the same time, since they depend on resolution of the same question, namely whether there is a likelihood of confusion between the Titanic Quarter marks and the sign “Titanic Spa”.[115]The primary case of Titanic Belfast is that the marks are not confusingly similar. This was the view that they formed in 2011, and it remains their position. However, their secondary case is that if, as I have decided, there is a likelihood of confusion between Titanic Spa and Titanic Hotel/Titanic Liverpool, then there must also be a likelihood of confusion between Titanic Quarter and Titanic Spa. So the counterclaim is advanced as a “squeeze”. It depends critically upon the way that Titanic Huddersfield has pleaded its case in the IPEC claim, and whether I accept the allegations made in the pleading.[116]First, Titanic Belfast points out that Titanic Huddersfield has pleaded expressly that it has achieved a substantial turnover in the provision of hotel services, and the provision of food and drink and temporary accommodation, which services are offered under the sign “Titanic Spa”. I have accepted the evidence which supports this. Accordingly, I find that the services for which Titanic Huddersfield has used its sign are identical to the class 43 services for which the Titanic Quarter marks are registered.[117]As to the comparison of marks, in the IPEC claim, Titanic Huddersfield has pleaded as follows:
“The most distinctive element of the TITANIC SPA Mark is the word TITANIC. In the context of hotel accommodation and residential spa services (including provision of food and drink) the word SPA does not add any significant level of distinctiveness to the TITANIC SPA Mark such as to differentiate, or to differentiate to any adequate degree, use of the word TITANIC alongside the word HOTEL.”
[118]Titanic Belfast submits that on the basis of this reasoning, it follows that the most distinctive element of the Titanic Quarter marks is also the word “Titanic”. In respect of both the word and device marks for Titanic Quarter, on Titanic Huddersfield’s case, the word “Quarter” does not add any significant level of distinctiveness to the word “Titanic”. Titanic Huddersfield has alleged that “Quarter” is a term used to denote a particular part of a city. The dominant and distinctive element of both marks, on this basis, is the word “Titanic”; and the General Court has indicated that consumers will generally pay greater attention to the beginning of mark than to its end; Red Bull GmbH v OHIM, Sun Mark Ltd (Case T-78/13) [2015] ETMR 18.[119]Titanic Belfast also relies on the cross-examination of Mrs Burton, who supported the pleaded case and explained Titanic Spa’s aims in this litigation. At T2/223-225, she made clear that Titanic Huddersfield objected to any use of the word “Titanic” as the name of a hotel, other than as part of a “strap line”. She was asked specifically about whether Titanic Spa would object if Titanic Liverpool rebranded its hotel to “Titanic Quarter”. She considered that this would not address the problem because there would still be customer confusion (T2/225/14-22):
“Q. …is it your position that changing the name hotel to the Titanic Quarter Hotel is not going to address these customer misunderstandings? A. I do not think it will, no. Q. The reason for that is, in your view there will still be too much confusion with your hotel in Huddersfield? A. Yes, Because I spent 11 years PR-ing the name Titanic and obviously 11 years ago it was obviously very unique name in the UK.”
[120]That evidence ignores the fact that the Titanic Quarter registrations predate any use or registration of “Titanic Spa” by Titanic Huddersfield. Titanic Belfast are the owners of the earliest registrations, and if there is a likelihood of confusion between “Titanic Quarter” and “Titanic Spa”, then it follows that Titanic Huddersfield’s trade mark registration is invalid, and its use of the sign “Titanic Spa” is, and has always been, an infringement of the Titanic Quarter registrations.[121]However, in my judgment, Titanic Huddersfield has made too sweeping a claim, to the effect that it can monopolise all use of the word “Titanic” in the name of a hotel. I have rejected the proposition that I should compare the marks “Titanic Spa” and “Titanic Hotel” on the basis of a single dominant and distinctive element rather than as a composite. Therefore, I do not accept the wider propositions advanced by Titanic Huddersfield. Had I done so, the Counterclaim by Titanic Belfast would have succeeded. In the circumstances, the “squeeze” relied on by Titanic Liverpool and Titanic Belfast does not apply, but nonetheless, I must consider whether there is a likelihood of confusion between the Titanic Quarter marks and the “Titanic Spa” sign[122]Comparing the mark “Titanic Quarter” with the sign “Titanic Spa” there is visual and aural similarity as a result of the presence of the word “Titanic”. On the other hand, I consider that, conceptually, they are different. The composite mark “Titanic Quarter” whilst possessing a distinctive character, nonetheless conveys the message of an area or geographical location. The sign “Titanic Spa” conveys a quite different message, of a business which offers spa facilities.[123]I bear in mind that the marks and sign are used in respect of identical services. On the other hand, Mr Cuddigan made clear that Titanic Belfast does not rely on any use that had been made of the Titanic Quarter marks in support of its Counterclaim. Therefore, for this purpose, the Titanic Quarter marks do not have an enhanced distinctive character as a result of the use made of them.[124]Titanic Huddersfield contrasts the evidence of actual confusion in respect of infringement of the Titanic Spa mark with the absence of evidence of such confusion between Titanic Spa and Titanic Quarter. I do not consider that this affects the conclusion that I would otherwise reach on this issue. Because of their different geographical locations, there is negligible competition between Titanic Quarter in Belfast and Titanic Spa in Huddersfield. In these circumstances, actual confusion is not to be expected.[125]I must assume, for the purposes of this comparison, that there has been notional and fair use of the Titanic Quarter marks within the scope of the registrations; Reed Executive Plc and another v Reed Business Information Ltd and others [2004] EWCA Civ 159; [2004] ETMR 56 at [79] – [81]. As stated in Kerly’s Law of Trade Marks and Trade Names (Fifteenth Edition)at [14-087]:
“An absence of confusion may be attributable to the nature of the parties’ respective presences in the market; they may have traded in different geographical areas or carried on different core activities, but all within the scope of the registration.”
[126]In conclusion, having regard to the general principles set out in the Specsavers and Asos cases, I do not consider that there is a likelihood of confusion between the Titanic Quarter Marks and the Titanic Spa mark and sign. Accordingly, I reject the challenge to validity of the Titanic Spa mark, and I find that use of that sign by Titanic Huddersfield does not amount to an infringement of the Titanic Quarter Marks.[11]Is Titanic Huddersfield entitled to rely on any goodwill accrued to it in respect of “Titanic Spa” in the event that Titanic Huddersfield’s use of that sign amounts to infringement of the Titanic Quarter marks?[127]Given my conclusion that Titanic Huddersfield’s use of the sign “Titanic Spa” does not amount to infringement of the Titanic Quarter marks, this issue does not arise. Although I heard interesting arguments from Counsel on this question of law, which is of some importance, it is appropriate to decide it in a case where it matters to the result.[12]Do the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool amount to passing off?

Legal principles

[128]The well-known “trinity” of elements required to establish passing off were set out by Lord Oliver in Reckitt & Coleman v Borden Inc [1990] 1 WLR 491 at p. 499:

Legal principles

“…The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.”
[129]It is important to bear in mind that there is a distinction between misrepresentation and confusion. This was emphasised by Kitchin LJ in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41; [2016] FSR 30 at [157] – 159]. The scope of protection for passing off is not the same as the scope of protection for infringement of a registered trade mark. The distinction was lucidly explained by Jacob LJ in Phones4U v Phones4U.co.uk Internet [2006] EWCA Civ 244; [2007] RPC 5 at [18]:
“Clearly if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too - for instance those in the Buttercup case. A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant's goodwill or divert trade from him. I emphasise the word “really”.”
[130]Initial interest deception, which is dispelled before the moment of purchase, may also be actionable if it is really likely to be damaging to the claimant’s goodwill or to divert trade; (Kerly [18-103]).[131]The relevant date for assessment of passing off is the date of commencement of the acts complained of; Cadbury Schweppes Pty Ltd v Pub Squash Co Ltd [1981] RPC 429 at p.494. However, if a defendant alters its manner of trading, then the issue may have to be considered at more than one date.

Application to the facts

[132]As to goodwill, I accept that Titanic Huddersfield has acquired goodwill in the name “Titanic Spa” in relation to the provision of spa services with temporary accommodation. However, I do not accept its claim that it has acquired a substantial goodwill throughout the United Kingdom in the mark “Titanic” alone.[133]I consider that, before the rebranding of the spa to “Maya Blue” there was misrepresentation by Titanic Liverpool, which amounted to more than mere confusion. The uses complained of by Titanic Huddersfield include “Titanic Hotel Spa”, “Spa at the Titanic Hotel” and “T-Spa”. Although I take full account of the fact that the majority of instances of confusion are “wrong way round confusion”, where the consumer may know only of Titanic Liverpool, other instances are of “right way round” confusion. I also accept that such confusion is likely to have been damaging to the goodwill of Titanic Huddersfield, for example where customers have been frustrated that they have made a reservation at the wrong place.[134]I have had some doubt as to whether the misrepresentation continued after the re-branding of the spa to “Maya Blue”, together with the other steps already taken by Titanic Liverpool to avoid confusion. On balance, I consider that it will be necessary to take the additional steps offered by Titanic Liverpool in order adequately to distinguish its hotel from Titanic Huddersfield’s spa. I bear in mind that, currently, there is nothing on Titanic Liverpool’s website to indicate that it is not connected with Titanic Huddersfield, and it continues to use the word “spa”, as well as the name “Titanic”.[135]Once those steps have been taken, I do not accept that there will be any misrepresentation, any real likelihood of damage to the goodwill of Titanic Huddersfield, or any real likelihood of diversion of trade. In those circumstances, the use of the name “Titanic Hotel Liverpool” for a large hotel offering restaurant, conferencing, wedding facilities and a health and fitness facility does not constitute a misrepresentation that the hotel is operated by or connected with “Titanic Spa” in Huddersfield.[136]It is possible that a few particularly careless consumers may still reserve rooms at the wrong location even after these steps have been taken. Mr Wynne recounts an incident on 30 September 2015 when a party of guests arrived at the Liverpool Hotel, having mistakenly booked at the Huddersfield Spa. However, to drive to Liverpool, having reserved at an establishment which makes clear that it is located in Huddersfield, is the act of the proverbial “moron in a hurry”, as opposed to the average consumer.[137]In conclusion, the passing off claim succeeds in respect of the past acts complained of, but, having regard to the steps taken and proposed to be taken by Titanic Liverpool to distinguish its hotel from the business operated by Titanic Huddersfield, it fails in respect of the future.[13]Should Titanic Belfast and Titanic Liverpool be granted a declaration that they are legitimately entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” and the 544 device mark in relation to hotels in the United Kingdom?[138]Kitchin J considered general principles relating to declaratory relief in Arrow Generics Ltd, Arrow Pharm (Malta) Ltd v Merck & Co, Inc [2007] EWHC 1900 (Pat); [2007] FSR 39. He said that: i) The approach to the grant of declarations is pragmatic, and a matter of discretion rather than jurisdiction. The use of negative declarations should be rejected where it would serve no useful purpose. On the other hand, where a negative declaration would help to ensure that the aims of justice are achieved “the courts should not be reluctant to grant such declarations. They can and do assist in achieving justice”. Messier-Dowty Ltd v Sabena SA [2001] 1 All ER 275 per Lord Woolf MR at [41]. ii) The power to make declarations is unfettered, and the court has to consider whether, in all the circumstances, it is appropriate to make such an order. When considering whether to grant a declaration, the court should take into account “justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons why or why not the court should grant the declaration.” Financial Services Authority v Rourke [2001] All ER (D) 266 (Oct) per Neuberger J. iii) There needs to be real commercial reasons for the person seeking the declaration to have standing to do so; see the judgments of Pumfrey J. and the Court of Appeal in Nokia Corp v Interdigital Technology Corp [2006] EWCA Civ 1618; [2007] FSR 23.[139]In my judgment, the declaration sought will serve a useful purpose. As explained above, Titanic Huddersfield’s case is that use of the word “Titanic” whether on its own or in combination with other terms, constitutes an infringement of its trade mark. As the evidence made clear, Titanic Huddersfield objects to use of the name “Titanic Quarter” in respect of the Titanic Hotel Liverpool. However, I have found that “Titanic Quarter” and “Titanic Spa” are not confusingly similar, so this objection must fail. Titanic Belfast are entitled to use the mark Titanic Quarter in respect of hotels, and to sub-license Titanic Liverpool to use these marks.[140]Further, Titanic Belfast may wish to extend the Titanic Quarter brand to other parts of the United Kingdom in the future and may, just as it has done with Titanic Liverpool, licence associated companies for the purposes of doing so. It is entitled to use “Titanic Quarter” in such future developments.[141]I consider that both the underlying issue and relief sought are sufficiently clearly defined, although I will hear Counsel on the precise form of the declaration to be ordered.[142]I believe that it is just to all the parties, to ensure commercial certainty, that the declaration should be made, and there are no special reasons for not doing so.

Conclusion

[143]I have concluded as follows: i) The Hearing Officer erred in law and in principle in refusing to admit further evidence sought to be adduced by TTL, and that evidence should be admitted. ii) The appeal from the decision of the Hearing Officer to revoke the 115 mark is allowed, and I have determined a fair specification of services for that mark, having regard to the use which has been made of it. iii) Titanic Huddersfield’s 423 mark “Titanic Spa” has been infringed by the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool. iv) Titanic Liverpool cannot rely on the own name defence under section 11(2) of the Trade Marks Act 1994 in respect of past acts of infringement. However, the steps which it has taken and proposes to take will avoid a likelihood of further confusion, and it can rely on section 11(2) as a defence to future acts of infringement. v) I reject the challenge to validity of the Titanic Spa mark in the light of the Titanic Quarter registrations. vi) The passing off claim against Titanic Liverpool succeeds in respect of the past acts complained of, but, having regard to the steps taken and proposed to be taken by Titanic Liverpool to distinguish its hotel from the business operated by Titanic Huddersfield, it fails in respect of the future. vii) Titanic Belfast and Titanic Liverpool shall be granted a declaration that they are legitimately entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” and the 544 device mark in relation to hotels in the United Kingdom.

Cited in 3 later judgments