Claridge's Hotel Ltd v Claridge Candles Ltd & Anor

Claridge's Hotel Ltd v Claridge Candles Ltd & Anor

The Defendants’ use of the CLARIDGE sign on candles and related goods constitutes infringement of the Claimant’s ‘526 mark under s 10(3) of the Trade Marks Act 1994 due to the substantial reputation and distinctive character of the mark in relation to hotel services, the similarity of the marks, and the unfair advantage gained by the Defendants. The Claimant’s use of the mark on toiletries provided to hotel guests does not constitute genuine use for those goods, leading to partial revocation of the mark. The Defendants’ use also amounts to passing off, and the Second Defendant is personally liable as she personally committed the infringing acts.

Parties
Claimant: Claridge’s Hotel Limited; First Defendant: Claridge Candles Limited; Second Defendant: Denise Shepherd
Jurisdiction
England and Wales
Judgment Date
29 July 2019
Procedural Posture
Intellectual Property Infringement and Counterclaim for Revocation / Judgment After Trial
Outcome
Claim for infringement under s 10(3) and passing off succeeds; counterclaim for partial revocation of the ‘526 mark succeeds; Second Defendant personally liable.
Legal Topics
Trademark Infringement, Revocation for Non Use, Passing Off, Personal Liability of Directors
Intellectual Property Trademark Law Passing Off Trademark Infringement Revocation for Non Use Personal Liability of Directors

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Parties

Claridge’s Hotel Limited

Claimant

Claridge Candles Limited

First Defendant

Denise Shepherd

Second Defendant

Procedural Posture

Intellectual Property Infringement and Counterclaim for Revocation / Judgment After Trial

Legal Issues

  1. 1 Whether the Claimant’s ‘526 mark has an enhanced distinctive character and/or reputation in the UK for any registered goods or services
  2. 2 Whether the Defendants’ use of the CLARIDGE sign constitutes infringement under s 10(3) and/or s 10(2) of the Trade Marks Act 1994
  3. 3 Whether the Defendants’ use amounts to passing off

Ratio Decidendi

The Defendants’ use of the CLARIDGE sign on candles and related goods constitutes infringement of the Claimant’s ‘526 mark under s 10(3) of the Trade Marks Act 1994 due to the substantial reputation and distinctive character of the mark in relation to hotel services, the similarity of the marks, and the unfair advantage gained by the Defendants. The Claimant’s use of the mark on toiletries provided to hotel guests does not constitute genuine use for those goods, leading to partial revocation of the mark. The Defendants’ use also amounts to passing off, and the Second Defendant is personally liable as she personally committed the infringing acts.

Court Disposition

Claim for infringement under s 10(3) and passing off succeeds; counterclaim for partial revocation of the ‘526 mark succeeds; Second Defendant personally liable.

Orders

  • Defendants’ use of the CLARIDGE sign infringes the ‘526 mark under s 10(3) for all relevant products, both sold and intended to be sold.
  • The ‘526 mark is revoked for non-use in relation to certain goods and services as specified in the judgment.