Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors [2016] EWHC 3103 (Ch) (02 December 2016)

Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors [2016] EWHC 3103 (Ch) (02 December 2016)

The Hearing Officer erred in law by failing to consider the materiality of the further evidence and prejudice to TTL, and by taking into account irrelevant factors regarding delay. The further evidence was highly material and should have been admitted. On the merits, the 115 mark had been used for the relevant...

Source-derived case information.

Citation
[2016] EWHC 3103 (Ch)
Parties
Claimant (ip 2015 000043), Respondent (ch 2016 000141): Property Renaissance Limited T/A Titanic Spa; Defendant (ip 2015 000043), Claimant (hc 2016 002154), Appellant (ch 2016 000141): Stanley Dock Hotel Limited T/A Titanic Hotel Liverpool; Defendant (ip 2015 000043), Claimant (hc 2016 002154): Stanley Dock Properties Limited T/A Titanic Hotel Liverpool; Defendant (ip 2015 000043), Claimant (hc 2016 002154): Titanic Trademark Limited; Defendant (ip 2015 000043), Claimant (hc 2016 002154): Titanic Quarter Limited
Jurisdiction
England and Wales
Judgment Date
02 December 2016
Procedural Posture
Consolidated High Court and IPEC Proceedings (trade Mark Infringement, Revocation, Passing Off, Appeal) / Judgment After Trial and Appeal
Outcome
Appeal allowed in part; further evidence admitted; 115 mark not revoked; infringement established but own name defence succeeds; no amendment to specification; no passing off; no injunctive relief granted.
Legal Topics
Trade Mark Infringement, Revocation for Non Use, Passing Off, Own Name Defence, Specification Amendment, Admissibility of Evidence
Intellectual Property Commercial Law Trade Mark Infringement Revocation for Non Use Passing Off Own Name Defence Specification Amendment Admissibility of Evidence

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Parties

Property Renaissance Limited T/A Titanic Spa

Claimant (ip 2015 000043), Respondent (ch 2016 000141)

Stanley Dock Hotel Limited T/A Titanic Hotel Liverpool

Defendant (ip 2015 000043), Claimant (hc 2016 002154), Appellant (ch 2016 000141)

Stanley Dock Properties Limited T/A Titanic Hotel Liverpool

Defendant (ip 2015 000043), Claimant (hc 2016 002154)

Titanic Trademark Limited

Defendant (ip 2015 000043), Claimant (hc 2016 002154)

Titanic Quarter Limited

Defendant (ip 2015 000043), Claimant (hc 2016 002154)

Procedural Posture

Consolidated High Court and IPEC Proceedings (trade Mark Infringement, Revocation, Passing Off, Appeal) / Judgment After Trial and Appeal

Legal Issues

  1. 1 Whether the Hearing Officer erred in refusing to admit further evidence for the 115 mark revocation
  2. 2 Whether the 115 mark should be revoked for non-use
  3. 3 Whether Titanic Spa mark is infringed by Titanic Liverpool's use of 'Titanic'

Ratio Decidendi

The Hearing Officer erred in law by failing to consider the materiality of the further evidence and prejudice to TTL, and by taking into account irrelevant factors regarding delay. The further evidence was highly material and should have been admitted. On the merits, the 115 mark had been used for the relevant services and should not be revoked. Titanic Liverpool's use of 'Titanic' in relation to hotel and spa services was likely to cause confusion with the Titanic Spa mark, amounting to infringement, but the 'own name' defence applied as the use was in accordance with honest commercial practices. The specifications for the 115 mark did not require amendment. No passing off was established.

Court Disposition

Appeal allowed in part; further evidence admitted; 115 mark not revoked; infringement established but own name defence succeeds; no amendment to specification; no passing off; no injunctive relief granted.

Orders

  • Further evidence of use of the 115 mark admitted.
  • Revocation of the 115 mark set aside; registration maintained for existing specification.