Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch) (24 March 2004)

Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch) (24 March 2004)

The defendant infringed the claimant's CTM and UK marks by use of 'COMPASS' alone and by use of 'COMPASS LOGISTICS' under Article 9(1)(b) (likelihood of confusion), but not under Article 9(1)(a) (strict identity). The defendant's prior use of 'COMPASS LOGISTICS' did not give rise to rights of more than mere local significance and thus did not invalidate the CTM. The UK mark was valid and not subject to full revocation, but its specification was partially narrowed to exclude services not genuinely used by the claimant.

Citation
[2004] EWHC 520 (Ch)
Parties
Claimant: Compass Publishing BV; Defendant: Compass Logistics Ltd
Jurisdiction
England and Wales
Judgment Date
24 March 2004
Procedural Posture
Intellectual Property (trade Mark Infringement and Validity) / High Court Judgment After Trial
Outcome
Claimant succeeds in infringement claims; defendant's counterclaim for invalidity and revocation fails except for partial narrowing of UK mark specification.
Legal Topics
Trade Mark Infringement, Trade Mark Validity, Community Trade Mark Regulation, Passing Off, Likelihood of Confusion, Partial Revocation for Non Use
Intellectual Property Trade Marks Trade Mark Infringement Trade Mark Validity Community Trade Mark Regulation Passing Off Likelihood of Confusion Partial Revocation for Non Use

Case Brief

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Parties

Compass Publishing BV

Claimant

Compass Logistics Ltd

Defendant

Procedural Posture

Intellectual Property (trade Mark Infringement and Validity) / High Court Judgment After Trial

Legal Issues

  1. 1 Whether the defendant infringed the claimant's registered trade marks by use of 'COMPASS' and 'COMPASS LOGISTICS'
  2. 2 Whether the claimant's Community Trade Mark (CTM) and UK marks are valid or should be partially revoked for non-use
  3. 3 Whether the defendant's prior use of 'COMPASS LOGISTICS' gives rise to rights of more than mere local significance under Article 8(4) of the CTM Regulation

Ratio Decidendi

The defendant infringed the claimant's CTM and UK marks by use of 'COMPASS' alone and by use of 'COMPASS LOGISTICS' under Article 9(1)(b) (likelihood of confusion), but not under Article 9(1)(a) (strict identity). The defendant's prior use of 'COMPASS LOGISTICS' did not give rise to rights of more than mere local significance and thus did not invalidate the CTM. The UK mark was valid and not subject to full revocation, but its specification was partially narrowed to exclude services not genuinely used by the claimant.

Court Disposition

Claimant succeeds in infringement claims; defendant's counterclaim for invalidity and revocation fails except for partial narrowing of UK mark specification.

Orders

  • Declaration of infringement of CTM and UK marks by defendant's use of 'COMPASS' and 'COMPASS LOGISTICS'
  • Injunction restraining further infringement