Stichting BDO & Ors v BDO Unibank, Inc & Ors

Stichting BDO & Ors v BDO Unibank, Inc & Ors

The court held that most of the defendants' advertisements were not targeted at EU consumers and thus did not constitute infringing use. Only three advertisements were prima facie infringements, but the own name defence under Article 12(a) applied. The claim for infringement by use of 'BDO Remit' failed as there was no likelihood of confusion or dilution. The counterclaim for partial invalidity was abandoned; the counterclaim for partial revocation succeeded in part, narrowing the specification of services for the Trade Mark.

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 Counterclaim for Partial Invalidity/revocation / Judgment After Trial
Outcome
Claim for infringement dismissed except for three advertisements, but own name defence applies; counterclaim for partial revocation succeeds in part; counterclaim for partial invalidity abandoned.
Legal Topics
Community Trade Mark Regulation, Partial Revocation, Likelihood of Confusion, Own Name Defence, Infringement, Reputation and Distinctiveness
Intellectual Property Trade Marks Community Trade Mark Regulation Partial Revocation Likelihood of Confusion Own Name Defence Infringement Reputation and Distinctiveness

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 Counterclaim for Partial Invalidity/revocation / Judgment After Trial

Legal Issues

  1. 1 Whether the defendants infringed the claimants' Community Trade Mark by use of 'BDO' and 'BDO Remit' in the UK and EU publications
  2. 2 Whether the Trade Mark should be partially revoked for non-use
  3. 3 Whether the own name defence under Article 12(a) applies

Ratio Decidendi

The court held that most of the defendants' advertisements were not targeted at EU consumers and thus did not constitute infringing use. Only three advertisements were prima facie infringements, but the own name defence under Article 12(a) applied. The claim for infringement by use of 'BDO Remit' failed as there was no likelihood of confusion or dilution. The counterclaim for partial invalidity was abandoned; the counterclaim for partial revocation succeeded in part, narrowing the specification of services for the Trade Mark.

Court Disposition

Claim for infringement dismissed except for three advertisements, but own name defence applies; counterclaim for partial revocation succeeds in part; counterclaim for partial invalidity abandoned.

Orders

  • Specification of services for the Trade Mark narrowed as set out in paragraph 88, with effect from 10 December 2007.
  • No injunction or relief for infringement granted.