Lloyd's & Anor v Lloyds Publishing Group Ltd (Rev 1)

Lloyd's & Anor v Lloyds Publishing Group Ltd (Rev 1)

The defendant's use of 'Lloyds', 'Lloyds Publishing', and related marks in marketing and publication titles constituted trademark infringement under section 10(3) and passing off, given the claimants' established reputation and evidence of confusion and unfair advantage; the counterclaim for invalidity based on lack of distinctiveness was dismissed as fanciful; delay and acquiescence did not bar relief; however, summary judgment was not granted on section 10(2)(b) due to arguable issues of similarity of goods/services, and the defendant was not barred from using its full company name pending trial.

Parties
1st Claimant: Lloyd's; 2nd Claimant: Informa UK Limited; Defendant: Lloyds Publishing Group Limited
Jurisdiction
England and Wales
Judgment Date
19 June 2008
Procedural Posture
Intellectual Property / Summary Judgment Application and Supplemental Judgment
Outcome
Summary judgment granted in part for claimants; counterclaim dismissed; injunctive relief ordered; supplemental judgment records settlement.
Legal Topics
Trademark Infringement, Passing Off, Distinctiveness of Marks, Acquiescence, Delay, Injunctive Relief
Intellectual Property Commercial Law Trademark Infringement Passing Off Distinctiveness of Marks Acquiescence Delay Injunctive Relief

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Parties

Lloyd's

1st Claimant

Informa UK Limited

2nd Claimant

Lloyds Publishing Group Limited

Defendant

Procedural Posture

Intellectual Property / Summary Judgment Application and Supplemental Judgment

Legal Issues

  1. 1 Whether the defendant infringed the claimants' trademarks under section 10(3) of the Trade Marks Act 1994
  2. 2 Whether the defendant committed passing off
  3. 3 Whether the defendant's counterclaim for invalidity based on lack of distinctiveness succeeds

Ratio Decidendi

The defendant's use of 'Lloyds', 'Lloyds Publishing', and related marks in marketing and publication titles constituted trademark infringement under section 10(3) and passing off, given the claimants' established reputation and evidence of confusion and unfair advantage; the counterclaim for invalidity based on lack of distinctiveness was dismissed as fanciful; delay and acquiescence did not bar relief; however, summary judgment was not granted on section 10(2)(b) due to arguable issues of similarity of goods/services, and the defendant was not barred from using its full company name pending trial.

Court Disposition

Summary judgment granted in part for claimants; counterclaim dismissed; injunctive relief ordered; supplemental judgment records settlement.

Orders

  • Permanent injunction restraining defendant from making statements or using marketing methods conveying connection with claimants, including specific prohibitions on certain statements and publication titles.
  • Interim injunction pending trial preventing use of domain name lloyds-pg.com and web address www.lloyds-pg.com, with cross-undertaking in damages.