Claridge's Hotel Ltd v Claridge Candles Ltd

JurisdictionEngland & Wales
JudgeMr Recorder Douglas Campbell
Judgment Date29 July 2019
Neutral Citation[2019] EWHC 2003 (IPEC)
CourtIntellectual Property Enterprise Court
Date29 July 2019
Docket NumberClaim No: IP-2018-000160

[2019] EWHC 2003 (IPEC)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES

INTELLECTUAL PROPERTY LIST (ChD)

INTELLECTUAL PROPERTY ENTERPRISE COURT

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

Mr Recorder Douglas Campbell QC

(sitting as a Judge of the Intellectual Property Enterprise Court)

Claim No: IP-2018-000160

Between:
Claridge's Hotel Limited
Claimant
and
(1) Claridge Candles Limited
(2) Denise Shepherd
Defendants

Georgina Messenger (instructed by Urquhart-Dykes & Lord LLP) for the Claimant

Aaron Wood (of Wood IP Limited) for the Defendants

Hearing dates: 16 th – 17 th July 2019

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Mr Recorder Douglas Campbell QC:

Introduction

1

Can Claridge's Hotel stop the sale of CLARIDGE branded candles and other goods by the Defendants? Neither side showed me a physical sample of any of the Defendants' products but the Defendants provided the following sample image of their candle as sold:

2

That question is simple enough to state but it is more complicated to answer. I will begin by setting out some background.

The parties

3

The Claimant has operated a well-known hotel in London under the name CLARIDGE'S since its incorporation in 1889. Indeed it actually started trading as an unincorporated business under the name CLARIDGE'S in 1856. The First Defendant is a small company incorporated under the laws of England and Wales with an address at a business park in Folkestone, Kent. The Second Defendant is the sole owner and director thereof and lives at 5 Claridge Court, Hempstead, Gillingham, Kent. The Defendants have sold candles (as shown above) and also reed diffusers since around September 2018.

The Claimant's trade mark registrations

4

The Claimant obtained two UK trade mark registrations namely no. 2397526 (“'526”), filed on 22 July 2005 and no. 2331738 (“'738”), filed on 9 May 2003. Both registrations are for the word mark “CLARIDGE'S”. This action was commenced by claim form on 12 October 2018, and the Claimant originally relied on both marks. The Defendants counterclaimed for revocation of both marks for non-use by a counterclaim dated 22 October 2018, which I am told was served on the Claimant on 23 October 2018.

5

The Claimant has since voluntarily surrendered the '738 mark, which thus drops out of the picture, and partially surrendered the '526 mark. As a result of an error by the UKIPO, the register of trade marks does not at the moment correctly show the effect of the partial surrender. The correct list of goods and services for which the '526 mark is currently registered is as follows:

Class 3: “ Toiletries; shampoos; conditioners; bath preparations; body lotions; essential oils; shower gels; moisturiser”.

Class 5: “ Bath preparations; hair care and hair cleaning products; hand care and hand cleaning products”.

Class 16: “ Printed publications; magazines

Class 35: “ Retail services connected with the sale of food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements; online electronic retail services connected with the sale of food and foodstuffs, drinks (alcoholic and non-alcoholic); business management of hotels; business management of health clubs and spas; provision of business facilities and services

Class 43: “ Hotel, restaurant, cafe and bar services; arranging and booking hotels and accommodation services; accommodation reservation services; provision of facilities for meetings, functions, conferences and conventions; catering services

Class 44: “ Provision of beauty treatments and therapies; pedicure and manicure services; depilatory services; cosmetic services; health spa services; massage services; flower arranging services

The First Defendant's trade mark application

6

Separately, the First Defendant filed an application for UK trade mark no. 3281086 for the word mark “CLARIDGE” on 8 January 2018 for various goods in classes 3 and 4, as follows:

Class 3: Reed Diffusers with scented oils; Diffuser sets with scented refills and reeds; Room perfume sprays; Room fragrance preparations; Potpourri; Perfumery, eau de perfume, eau de toilette, perfume, cologne, body spray; linen spray for personal use; Soaps;; hand cream; body wash; hair shampoo; hair conditioner; bath oil; bath grains; body wash; facial cleanser; facial toner; facial moisturizer; facial lotion; facial cream and gel; eye cream and gel; face make up remover; eye make up remover; facial cleansing cream; facial cleansing lotion; facial and body exfoliating preparations; face and body masques; body powder; hair spray; hair mousse; hair gel; deodorant /antiperspirant.

Class 4: Candles; Fragrance candles; Scented candles; Fragranced candles; Candle wax; Fragrant, perfumed and scented wickless candles; fragrance, perfumed and scented wax bars and chips for use in fragrance warmers.

7

The Claimant opposed the First Defendant's application on 26 April 2018. That opposition was stayed by the UKIPO on 7 November 2018 pending the result in this action.

8

Some of the goods covered by the First Defendant's trade mark application are goods which the First Defendant has not yet sold, eg perfumery. The Claimant seeks relief in relation to such goods on a quia timet basis. The Defendants did not object to this approach as a matter of principle.

Applications in this action

9

The Defendants issued an application for summary judgment on 18 January 2019 which was dismissed. A case management conference was heard before His Honour Judge Hacon on 7 February 2019. That identified a list of issues to be decided at trial. In fact matters have moved on since then, so I will adapt and simplify that list of issues to reflect the points which I now have to decide.

The issues

10

These are as follows:

Infringement of the Claimant's '526 registered trade mark

1. Whether the Claimant's 526 mark has an enhanced distinctive character and/or reputation in the UK in relation to any of the goods or services in relation to which it is registered, and if so, which of them.

2. Whether the Defendants' acts done in relation to their CLARIDGE sign constitute infringement pursuant to s 10(3) of the Trade Marks Act 1994 (“the Act”).

3. Whether the Defendants' acts done in relation to its CLARIDGE sign constitute infringement pursuant to s 10(2) of the Act.

Passing off

4. Whether the Defendants' use of CLARIDGE amounts to passing off.

Liability of the Second Defendant

5. Whether the Second Defendant is liable as a primary tortfeasor for the acts of trade mark infringement and passing off complained of.

Counterclaim for revocation of the Claimant's trade marks

6. Whether the Claimant has put its '526 mark to genuine use in the UK, and if so in relation to which goods and services.

11

The Claimant's case on issue 3 depends on whether it wins on issue 6, since its case under 10(2) of the Act was entirely based on maintaining a registration for toiletries and related goods in the face of the Defendants' attack of non-use. That non-use attack had various limbs to it, but the starting point was the fact that the Claimant did not charge for its toiletries separately nor did it intend to do so. They were provided to guests at the hotel for personal use and were included in the price of the room. There were also a large number of other arguments in relation to issue 6.

12

I will deal with issues 1 and 2 first, then issue 6, then issues 3–5. Before doing that I will consider the witnesses and their evidence generally.

The witnesses

13

I heard oral evidence on behalf of the Claimant from Mr Paul Jackson, the General Manager of the Claimant. He has held this role since 25 January 2016, although he had also worked for the Claimant in a junior role 30 years ago. He was cross-examined about the Claimant's use of its mark in relation to its restaurant, spa, cookbook, retail sales, candles, and toiletries.

14

He was subjected to a robust and at times combative cross-examination although it was never unfair. In closing the Defendant criticised his evidence in a number of respects, said he was a “company man” and submitted that I could only rely on his evidence where supported by other documentary evidence.

15

I reject these criticisms. I found him to be a good witness.

a) It is true that I found Mr Jackson's evidence a little confused in relation to the subject of the Claimant's retail sales, but I do not believe he was lying or intending to mislead.

b) He was wrong about some details relating to matters shown in documents, but he freely admitted his mistakes and in any event I was able to see the relevant documents myself.

c) Mr Jackson explained that it was unusual for hotels to put their own brand name on toiletries supplied for use by guests. He was criticised for failing to concede that customers would therefore be “surprised” to see the name CLARIDGE'S when so used. However I can see why Mr Jackson may have thought these were 2 different concepts. The Defendants certainly thought they were different concepts, since they asked him about this a number of times.

d) I agree with the Claimant that the Defendants' other criticisms of his evidence are made simply because the Defendants did not like the answers he gave.

16

I also heard oral evidence on behalf of the Defendants from the Second Defendant, Ms Shepherd. Her evidence was straightforward save for 2 issues.

1) The first such issue was her evidence about what Google searches she had done in relation to “Waxy Candles”, the original choice of name, and “Claridge Candles”. She contradicted herself and the questions had to be put to her a number of times. This evidence was more confused than Mr Jackson's evidence...

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