FIL Ltd v Fidelis Underwriting Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 11 May 2018 |
| Neutral Citation | [2018] EWHC 1097 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC-2016-003644 |
| Date | 11 May 2018 |
[2018] EWHC 1097 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Arnold
Case No: HC-2016-003644
Simon Malynicz QC and Tim Austen (instructed by Maucher Jenkins) for the Claimants
Charlotte May QC and Daniele Selmi (instructed by Bristows LLP) for the Defendants
Hearing dates: 17–19, 24 April 2018
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.
Contents
| Topic | Paragraphs |
| Introduction | 1–3 |
| The Trade Marks | 4–6 |
| The signs complained of | 7–23 |
| The witnesses | 8–23 |
| Fidelity's witnesses | 8–11 |
| Fidelis' witnesses | 12–23 |
| Factual background | 24–63 |
| Fidelity | 24–43 |
| Fidelis | 44–59 |
| The US dispute | 60–61 |
| The UK dispute | 62 |
| Third parties | 63 |
| Key legislative provisions | 64–70 |
| Relevant dates for assessment | 71–73 |
| The law | 71 |
| Assessment | 72–73 |
| The average consumer | 74–75 |
| The law | 74 |
| Assessment | 75 |
| Validity of the Trade Marks: descriptiveness | 76–84 |
| The law | 77 |
| Assessment | 78–84 |
| Interpretation of the specifications of services of the Trade Marks | 85–92 |
| The law | 86 |
| Assessment | 87–92 |
| Validity of the Trade Marks: clarity and precision of the | 93–95 |
| Specification of services | |
| The law | 93–94 |
| Assessment | 95 |
| Revocation of EU925 and UK490: non-use | 96–115 |
| The law | 97 |
| Assessment | 98–112 |
| Pensions structured as unit-linked insurance polices | 101–104 |
| Reinsurance of unit-linked insurance polices | 105 |
| Annuities | 106–111 |
| Annuity brokerage | 112 |
| A fair specification | 113 |
| Validity of UK598, EU598, UK888 and EU377: bad faith | 116–132 |
| The law | 117–118 |
| Assessment | 119–132 |
| Infringement under Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive | 133–156 |
| The law | 134 |
| Assessment | 135–156 |
| Bases of assessment | 135–137 |
| Distinctive character of EU925 and UK598 | 138 |
| Comparison between Trade Marks and the signs | 139–141 |
| Comparison of services | 142–144 |
| The average consumer | 145–149 |
| Absence of evidence of actual confusion | 150–152 |
| Overall assessment: EU925 | 153 |
| Overall assessment: UK598 | 154–155 |
| Conclusion | 156 |
| Infringement under Article 9(2)(c) of the regulation/Article 10(2)(c) of the Directive | 157–164 |
| The law | 158 |
| Assessment | 159 |
| Reputation of EU925 and UK598 | 159 |
| Link | 160 |
| Detriment to the distinctive character of EU925 and UK598 | 161 |
| Unfair advantage | 161–164 |
| Disposition of the counterclaim | 165 |
| Passing off | 166 |
| Summary of principal conclusions | 167 |
Introduction
In this case the Claimants (collectively “Fidelity”) contend that the Defendants (collectively “Fidelis”) have infringed three European Union and three United Kingdom trade marks (“the Trade Marks”) owned by the First Claimant (“FIL”) by use of the sign “Fidelis” and variants thereof, and have committed passing off. Fidelis deny infringement and passing off, and counterclaim for a declaration that the Trade Marks are wholly or partially invalid and for an order that the Trade Marks be revoked for non-use.
The claim has been brought under the Shorter Trials Scheme. At the initial case management conference Fidelis applied to transfer the case out of the Shorter Trials Scheme. I refused that application. It has subsequently turned out that Fidelis were correct that the case was not entirely suitable for the Shorter Trials Scheme, but for reasons that were not then apparent: the number and complexity of the issues has increased, primarily due to amendments by Fidelis to their Defence and Counterclaim; there have been disputes over disclosure; Fidelis ended up calling no less than 10 witnesses; and the hearing had to be extended from four days to five (including one day's judicial pre-reading), although in the end not all of the extra day was required.
The case bears certain similarities to Sky plc v SkyKick UK Ltd [2018] EWHC 155 (Ch) (and see also [2018] EWHC 973 (Ch)). Since I reviewed many of the relevant areas of law in that judgment, I shall not repeat the exercise in this judgment, but simply refer to the relevant passages in Sky v SkyKick. I have reviewed further relevant areas of law in other previous judgments, and I shall follow the same course. I apologise to the reader that this means that this judgment is not a self-contained statement of all my reasons; but that would require a considerably longer judgment.
The Trade Marks
FIL is the registered proprietor of the following Trade Marks:
i) EU Trade Mark No. 3844925 filed on 21 May 2004 consisting of the word FIDELITY for goods and services in Classes 16 and 36 (“EU925”);
ii) UK Trade Mark No. 3129598 filed on 1 October 2015 consisting of the word FIDELITY for services in Classes 35 and 36 (“UK598”);
iii) UK Trade Mark No. 2398490 filed on 3 August 2005 consisting of the words FIDELITY INTERNATIONAL for services in Class 36 (“UK490”);
iv) EU Trade Mark No. 14770598 filed on 5 November 2015 consisting of the words FIDELITY INTERNATIONAL for services in Classes 35 and 36 (“EU598”);
v) UK Trade Mark No. 3046888 filed on 14 March 2014 consisting of the words FIDELITY WORLDWIDE INVESTMENT for services in Class 36 (“UK888”); and
vi) EU Trade Mark No. 10054377 filed on 16 June 2011 consisting of the figurative sign shown below for services in Classes 35, 36 and 42 (“EU377”):
The Trade Marks are each registered for “financial services”, “insurance services” and “investment services”. Although Fidelity rely upon various other services in respect of which the Trade Marks are registered, counsel for Fidelity concentrated on these three services, and in particular the first two, as representing Fidelity's best case.
Counsel for Fidelity also concentrated on EU925 and UK598 as representing Fidelity's best case. I shall also concentrate upon these Trade Marks when dealing with infringement.
The signs complained of
The principal sign complained of is the word FIDELIS, in whatever typography. Complaint is also made of the following stylised forms:
The witnesses
Fidelity's witnesses
James Harris is Head of Marketing, UK Financial Services at FIL Investment Management Ltd (“FIL Investment”). He has been employed by FIL Investment for about 14 years.
Richard Parkin was Head of Pensions Policy for Fidelity's UK workplace pensions business from September 2002 to 31 December 2017. He was employed by FIL Investment and was a director of FIL Life Insurance Ltd (“FIL Life”) from March 2009 and Chairman of FIL Life Insurance (Ireland) Ltd (“FIL Life Ireland”) from December 2014. From May 2016 to 31 December 2017 he was Chair of the Association of British Insurers (“ABI”) Retirement Working Group and a member of the ABI Long Term Savings Committee.
Counsel for Fidelis submitted that both Mr Harris and Mr Parkin had advocated Fidelity's case rather than answering questions directly. I do not agree with this, and I accept both witnesses' evidence.
Andrew Cheseldine was Fidelity's expert witness on the subject of “investments in the form of insurance contracts”. Mr Cheseldine is an independent professional pension trustee. From 2010 to June 2017 he was a partner at Lane Clark & Peacock LLP, a financial consultancy, responsible for advising employers and pension trustees on all aspects of employee benefits. Prior to that he was a consultant at Watson Wyatt LLP and Hewitt Associates where his responsibilities included drafting and presenting communications to pension scheme members. Counsel for Fidelis accepted that he had given clear evidence and had done his best to assist the court.
Fidelis' witnesses
Richard Brindle was the co-founder of Fidelis and has been Chief Executive Officer of Fidelis since June 2015. He has worked in the insurance industry since 1984, when he joined Posgate and Denby Managing Agency as an underwriter. In 2005 he founded Lancashire Holdings Ltd (“Lancashire”), a provider of global specialty insurance and reinsurance. He was Lancashire's Chief Executive Officer until 2014. Counsel for Fidelity submitted that Mr Brindle had approached his evidence in a cavalier manner. I do not accept this, although I was slightly surprised that he initially gave a wrong date for when he had conceived the name Fidelis.
Daniel Burrows has been the Chief Executive Officer of the First Defendant (“Fidelis Underwriting”) since July 2015. He has worked in the insurance industry since 1984, when he joined Alexander Howden as a trainee broker.
Belinda Chiaramonte is the Chief Human Resources Officer at Fidelis.
Richard Coulson is the UK Chief Underwriting Officer for Fidelis. He has 15 years' experience in the insurance industry and joined Fidelis in 2015.
James Geffen retired in 2017 having worked in specialty insurance and reinsurance broking for 36 years. From 1981 to 2015 he worked for Miller Insurance. He dealt with Mr Brindle for many years, and placed business with him both at Lancashire and at Fidelis.
Sharon Ingham is the Group Financial Controller and UK Chief Financial Officer of Fidelis.
Martyn Shorrock retired in August 2017 having worked in the insurance industry for 33 years. His final role from 2009 to 2017 was a partner in JLT Specialty, an insurance broking firm. He attended university with Richard Brindle,...
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