Stichting BDO & Ors v BDO Unibank, Inc & Ors [2013] EWHC 418 (Ch) (04 March 2013)

Stichting BDO & Ors v BDO Unibank, Inc & Ors [2013] EWHC 418 (Ch) (04 March 2013)

The court held that the claimants' Trade Mark had been put to genuine use for certain, but not all, of the registered services, and ordered partial revocation accordingly. The use of 'BDO Remit' by the defendants in the UK created a likelihood of confusion with the claimants' mark for overlapping services and thus infringed Article 9(1)(b). The own name defence was not available as the use was not in accordance with honest practices. The defendants' counterclaim for invalidity based on lack of clarity was rejected.

Citation
[2013] EWHC 418 (Ch)
Parties
Claimant: Stichting BDO; Claimant: BDO IP Limited; Claimant: BDO LLP; Defendant: BDO Unibank, Inc.; Defendant: CBN London Limited; Defendant: Multinational Money Transfer Limited; Defendant: Sunrise Remittance (UK) Limited; Defendant: Direct Money Transfer UK Limited
Jurisdiction
England and Wales
Judgment Date
04 March 2013
Procedural Posture
Trade Mark Infringement and Revocation / High Court Judgment After Trial
Outcome
Claimants succeed in part; partial revocation of Trade Mark ordered; infringement found in respect of certain uses; counterclaim for invalidity dismissed.
Legal Topics
Community Trade Mark Regulation, Partial Revocation, Genuine Use, Likelihood of Confusion, Own Name Defence
Intellectual Property Trade Marks Community Trade Mark Regulation Partial Revocation Genuine Use Likelihood of Confusion Own Name Defence

Case Brief

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Parties

Stichting BDO

Claimant

BDO IP Limited

Claimant

BDO LLP

Claimant

BDO Unibank, Inc.

Defendant

CBN London Limited

Defendant

Multinational Money Transfer Limited

Defendant

Sunrise Remittance (UK) Limited

Defendant

Direct Money Transfer UK Limited

Defendant

Procedural Posture

Trade Mark Infringement and Revocation / High Court Judgment After Trial

Legal Issues

  1. 1 Whether the defendants' use of 'BDO' and 'BDO Remit' infringes the claimants' Community Trade Mark under Article 9(1)(b) and (c) of Regulation 207/2009/EC
  2. 2 Whether the Trade Mark should be partially revoked for non-use under Articles 15 and 51 of the Regulation
  3. 3 Whether the defendants can rely on the own name defence under Article 12(a)

Ratio Decidendi

The court held that the claimants' Trade Mark had been put to genuine use for certain, but not all, of the registered services, and ordered partial revocation accordingly. The use of 'BDO Remit' by the defendants in the UK created a likelihood of confusion with the claimants' mark for overlapping services and thus infringed Article 9(1)(b). The own name defence was not available as the use was not in accordance with honest practices. The defendants' counterclaim for invalidity based on lack of clarity was rejected.

Court Disposition

Claimants succeed in part; partial revocation of Trade Mark ordered; infringement found in respect of certain uses; counterclaim for invalidity dismissed.

Orders

  • Partial revocation of the Community Trade Mark for services not put to genuine use.
  • Declaration of infringement in respect of use of 'BDO Remit' for remittance services in the UK.