FIL Ltd & Anor v Fidelis Underwriting Ld & Ors

FIL Ltd & Anor v Fidelis Underwriting Ld & Ors

The Trade Marks are invalid in so far as registered for 'fidelity insurance'; this can be remedied by amending specifications to exclude 'fidelity insurance'. It is arguable the marks are invalid for 'financial services' due to lack of clarity and precision. EU925 and UK490 must be revoked for non-use except for 'pension-related insurance services'. Fidelis did not infringe the Trade Marks as the average consumer is highly knowledgeable and careful, and no likelihood of confusion exists. Fidelity's claim for passing off fails as infringement claims fail.

Parties
Claimant: FIL Limited; Claimant: FIL Investment Services Limited; Defendant: Fidelis Underwriting Limited; Defendant: Fidelis Insurance Bermuda Limited; Defendant: Fidelis Insurance Holdings Limited; Defendant: Fidelis Marketing Limited
Jurisdiction
England and Wales
Judgment Date
11 May 2018
Procedural Posture
Intellectual Property / Final Judgment
Outcome
Claim dismissed; partial revocation and amendment of Trade Marks ordered; counterclaims arguable but not determined.
Legal Topics
Trade Mark Infringement, Passing Off, Trade Mark Validity, Non Use Revocation, Bad Faith Registration, Specification Clarity
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Trade Mark Validity Non Use Revocation Bad Faith Registration Specification Clarity

Case Brief

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Parties

FIL Limited

Claimant

FIL Investment Services Limited

Claimant

Fidelis Underwriting Limited

Defendant

Fidelis Insurance Bermuda Limited

Defendant

Fidelis Insurance Holdings Limited

Defendant

Fidelis Marketing Limited

Defendant

Procedural Posture

Intellectual Property / Final Judgment

Legal Issues

  1. 1 Whether the Trade Marks are valid for 'insurance services' and 'financial services'
  2. 2 Whether Fidelis infringed the Trade Marks under Article 9(2)(b) and (c) of the Regulation/Article 10(2)(b) and (c) of the Directive
  3. 3 Whether the Trade Marks should be revoked for non-use

Ratio Decidendi

The Trade Marks are invalid in so far as registered for 'fidelity insurance'; this can be remedied by amending specifications to exclude 'fidelity insurance'. It is arguable the marks are invalid for 'financial services' due to lack of clarity and precision. EU925 and UK490 must be revoked for non-use except for 'pension-related insurance services'. Fidelis did not infringe the Trade Marks as the average consumer is highly knowledgeable and careful, and no likelihood of confusion exists. Fidelity's claim for passing off fails as infringement claims fail.

Court Disposition

Claim dismissed; partial revocation and amendment of Trade Marks ordered; counterclaims arguable but not determined.

Orders

  • Trade Marks to be amended to exclude 'fidelity insurance' from specifications.
  • EU925 and UK490 revoked for non-use except for 'pension-related insurance services'.