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When Goliath takes on David

16 September 19

Intellectual property briefing: Claridge’s Hotel has succeeded in a trade mark claim against a small supplier of luxury candles – but at a cost in finding its own marks restricted

by Alison Bryce

Claridge Candles, a small candle manufacturer from Hempstead, will be required to rebrand after losing a trade mark dispute with the famous Mayfair hotel of the same name, in Claridge’s Hotel Ltd v Claridge Candles Ltd [2019] EWHC 2003 (IPEC).

The candle company had been selling branded candles and reed diffusers under the Claridge name since September 2018. After being notified of this, the Claridge’s Hotel, established in 1889, brought a claim for trade mark infringement and passing off in the UK Intellectual Property Enterprise Court (IPEC).

Claridge’s Hotel holds a registered trade mark for the Claridge’s logo and word mark in a variety of classes, including toiletries, bath preparations, printed publications, retail services connected with food, hotel, restaurant and café bar services, and the provision of beauty treatments.

The owner of the candle company claimed that the candles were named after her home address, Claridge Court, and that any association with the hotel was merely coincidental. She argued, in fact, that she did not think of the hotel when the name was chosen.

Improper link

The court held that the trade mark benefited from a “very substantial reputation when used in relation to hotel services”, and was associated with an image of “luxury, glamour, elegance and exclusivity”. The threshold for bringing a claim under s 10(3) of the Trade Marks Act 1994, i.e. that the mark is being used in the course of trade and is identical or similar, was therefore easily met.

In coming to its conclusion, the court applied the criteria for infringement under s 10(3) as set out in Comic Enterprises v 20th Century Fox [2016] FSR 30. 

The court concentrated on whether Claridge Candles’ use created a link between its use and the trade mark and whether the use gave rise to one of the three possible types of injury (i.e. dilution, tarnishment, or unfair advantage).The court was satisfied that consumers would associate a link between the two brands and that, given they were both marketed as luxury goods, the candles were benefiting from the hotel’s extensive reputation. The court felt that given the similarity of the brands, there was likely to be confusion within the public regarding the two offerings.

Sting in the counterclaim

Interestingly, the owner of Claridge Candles counterclaimed for partial revocation of Claridge’s registered trade marks on the basis of non-use. Claridge’s was ultimately successful in their claims of infringement and passing off, relying on s 10(3) of the 1994 Act. However, they were not successful in their claim under s 10(2).

Claridge Candles had some success in their counterclaim for non-use. It claimed that the Claridge’s mark should be revoked as it was over five years old and had not been used across the full depth of classes it was registered in. The court sought evidence from the hotel to demonstrate use of the mark in the relevant classes. Claridge’s Hotel provided evidence showing use of the mark in classes 3 and 5. Class 3 includes toiletries such as perfumery, essential oils, cosmetics and hair lotions, and class 5 includes sanitary preparations for personal hygiene, other than toiletries and deodorants for personal use. Claridge’s Hotel was able to provide evidence of providing guests with branded toiletries as part of their stay with the hotel. However, the court held that this was not evidence to show it operated in the market. The branded toiletries were provided as part of the stay and inclusive in the rate paid for the room. They had never been marketed as a separate product. Given this, Claridge Candles was successful in its counterclaim in respect of classes 3 and 5.

The candle company was also partially successful in its counterclaim against other classes, namely 16 (stationery and similar products), 35 (advertising), 43 (services for providing food and drink and temporary accommodation), and 44 (services providing medical care, hygienic and beauty care). The mark was therefore pared back in these classes in accordance with the court’s findings.

Cost of success

This decision poses a variety of interesting concerns for rights holders with marks registered in a wide variety of classes. Although Claridge’s had a ruling in its favour in this case, it is up for debate as to whether the hotel was the “real winner”. Claridge’s might have succeeded in preventing an abuse of its trade mark, but at what cost? It has had its rights in relation to a number of classes limited in order to succeed in preventing the operation of a relatively small candle manufacturer from Hempstead. It will also have incurred a variety of legal costs and spent considerable time defending the counterclaim.

This decision serves as a warning to other parties in similar positions to consider your trade mark strategy as a whole before commencing litigation.

Alison Bryce, partner, Dentons UK & Middle East LLP

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