Och-Ziff Management Europe Ltd and Another v Och Capital LLP and Others
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Arnold |
| Judgment Date | 20 October 2010 |
| Neutral Citation | [2010] EWHC 2599 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC09C04142 |
| Date | 20 October 2010 |
[2010] EWHC 2599 (Ch)
THE HON Mr Justice Arnold
Case No: HC09C04142
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Guy Hollingworth (instructed by Linklaters LLP) for the Claimants
Alastair Wilson QC (instructed by SFS Global Ltd) for the Defendants
Hearing dates: 5–7 October 2010
Judgment As Approved by the Court
Contents
| Topic | Paragraphs |
| Introduction | 1–7 |
| The witnesses | 8–9 |
| Och-Ziff | 10–15 |
| The Defendants | 16–24 |
| The genesis of the present dispute | 25–28 |
| The key provisions of the Regulation | 29–30 |
| The Trade Marks | 31–32 |
| Validity of the OCH Trade Mark | 33–41 |
| The law | 34–37 |
| The facts | 38–41 |
| The signs and uses complained of | 42–50 |
| (1) The sign “OCH” | 43–44 |
| (2) The sign “OCH CAPITAL” | 45 |
| (3) The sign “ochcapital” or “ochcapital.co.uk” | 46 |
| (4) The sign “Och Capital” | 47–48 |
| (5) The Logo | 49 |
| (6) The sign “OCH Capital” | 50 |
| Infringement of the OCH Trade Mark under Article 9(1)(a) | 51–71 |
| “OCH” | 52–66 |
| The remaining signs | 67–71 |
| Infringement under Article 9(1)(b): the law | 72–100 |
| Contextual assessment | 76–78 |
| Initial interest confusion | 79–101 |
| Infringement of the OCH Trade Mark under Article 9(1)(b) | 102–108 |
| Infringement of the OCH-ZIFF Trade Mark under Article 9(1)(b) | 109–123 |
| Infringement of the OCH-ZIFF Trade Mark under Article 9(1)(c) | 124–139 |
| OCH Capital's defence under Article 12(a) | 140–149 |
| The law | 139 |
| The facts | 140–151 |
| Passing off | 152–160 |
| Goodwill | 154 |
| Misrepresentation | 155–157 |
| Damage | 158–160 |
| Liability of Union | 161–162 |
| Liability of Mr Ochocki | 169 |
| Conclusions | 170 |
Introduction
The Claimants (“Och-Ziff Management” and “OZ Management” respectively, collectively “Och-Ziff”) allege that the First Defendant (“OCH Capital”) has infringed two Community registrations for the trade marks OCH-ZIFF and OCH (“the Trade Marks”) by use of the sign “OCH Capital”, and variants thereof, and has committed passing off. Och-Ziff further allege that the Second and Third Defendants (“Union” and “Mr Ochocki”) are jointly liable with OCH Capital. The Defendants deny infringement and passing off. In addition, OCH Capital counterclaims for a declaration that the OCH Trade Mark (but not the OCH-ZIFF Trade Mark) is invalid.
What should be a relatively straightforward dispute has been complicated by three factors. The first is the complexity and uncertainty of current European trade mark law. This factor has, however, been mitigated by the fact that both counsel dropped certain points which had been pleaded by their respective clients.
The second factor is that in certain respects the facts of the case are a little unusual. At least from the Defendants' perspective, much turns on matters of pronunciation and presentation. I will elaborate on this point in due course, but at this stage it is sufficient to say that (i) the word “Och” in “Och-Ziff” derives from the surname of one Daniel Och and is correctly pronounced “Ock”, (ii) Mr Ochocki's surname is correctly pronounced “Oh-hots-ki” and (iii) the Defendants contend that the name “OCH Capital” is intended to be, and is, vocalised as “Oh-See-Aitch Capital”. I will use “O-C-H” to mean “OCH” pronounced as “Oh-See-Aitch”.
The third complicating factor is that the Defendants' conduct of the litigation has not been satisfactory. Of particular concern is OCH Capital and Union's failure to comply with their disclosure obligations and court orders. On 4 February 2010 Master Teverson made an order for directions in conventional form requiring the parties to give standard disclosure by 25 March 2010 and to exchange witness statements by 6 May 2010. OCH Capital and Union served a disclosure statement and list late, on 21 May 2010. The disclosure statement failed to comply with CPR r. 31.10(7) and the list only included a few publicly available documents and inter partes correspondence. It is clear that OCH Capital and Union failed to carry out proper searches for relevant documents before serving that list. Indeed, it appears that they did not even properly carry out the searches that the statement claimed had been carried out.
Having failed to get a response to correspondence about the inadequacy of the statement and list, Och-Ziff applied for specific disclosure and further directions. On 21 July 2010 Deputy Master Cousins made an order by consent for specific disclosure by 2 August 2010 and exchange of witness statements by 17 August 2010. Only on the eve of trial did OCH Capital and Union attempt to comply with this order. Very late on Sunday 3 October 2010 they served a witness statement of Mr Ochocki. Late on Monday 4 October 2010 they served witness statements from two other witnesses. Later still that day they served an amended disclosure statement incorporating a supplemental list.
For the reasons I gave in a ruling on the first day of trial I permitted OCH Capital and Union to serve Mr Ochocki's witness statement out of time on condition that Och-Ziff be permitted to join him as a defendant to the claim, but not the statements from the other witnesses. During the cross-examination of Mr Ochocki later that day, it became clear that, even when preparing the supplemental list, OCH Capital and Union had still not carried out proper searches for relevant documents. Over night, the Defendants carried out searches which resulted in further documents, including documents whose relevance was manifest, being disclosed early in the morning of the second day of trial accompanied by a second witness statement of Mr Ochocki explaining what had been done. This led to Mr Ochocki being recalled for cross-examination on that second statement. During the course of that cross-examination yet further documents were disclosed.
In the light of Mr Ochocki's evidence I accept that the Defendants did belatedly make a sincere attempt to rectify their previous omissions and to search for relevant documents, but in my judgment it is plain that those searches were not as complete as they could and should have been had they been carried out at the proper time. As a result, I cannot be satisfied that the Defendants have disclosed all the documents which they should have disclosed.
The witnesses
Och-Ziff's principal witnesses were Michael Cohen and Nicholas Lawson. Mr Cohen is the Chief Executive Officer of Och-Ziff Management and Head of European Investing for the Och-Ziff Group. Mr Lawson is Head of Macro Sales at Deutsche Bank. Rightly, counsel for the Defendants made no criticism of their evidence, which I accept. In addition, Och-Ziff served statements from Antony Ingrao and Sanford Heller, two witnesses as to confusion, whose evidence was not challenged.
For the reasons explained above, the Defendants' only witness was Mr Ochocki. While I accept that Mr Ochocki was attempting to be truthful, I did not find him to be a witness in whose evidence I had confidence. On a number of points he was either vague or unclear or inconsistent. Furthermore, he had no explanation for the fact that the Defence served by OCH Capital and Union contained at least three factual statements which proved to be false. I have therefore treated his evidence with some caution.
Och-Ziff
Och-Ziff are part of the Och-Ziff Group, which is a leading global asset management group, managing numerous alternative investment funds. In other words, it is a hedge fund. The Och-Ziff Group was founded in 1994 by Mr Och, who is the Chairman and Chief Executive Officer of the parent company. A large proportion of the original financial backing came from three members of the Ziff family, but other than that they have had little involvement in the Group.
The Och-Ziff Group operates a series of funds, which rely upon diverse investment strategies. OZ Management and certain of its subsidiaries manage all of the Och-Ziff funds, and hence the investment portfolio of its clients generally. The Group has been extremely successful. The parent company was listed on the New York Stock Exchange on 14 November 2007, at the time the largest initial public offering (“IPO”) undertaken by a hedge fund, and the second largest by any asset management firm. By then the Group managed approximately $30 billion of assets. As at 1 May 2010 the Group managed around $26 billion of assets for about 600 fund investors. Both in 2007 and 2010 it was listed as the seventh largest global hedge fund.
Since the Och-Ziff Group was established, it has expanded internationally. By the time of its IPO, it had offices in six countries, including one in London. Och-Ziff Management was incorporated on 1 December 1998 as the Group's European operating company. As at 1 November 2009, it managed approximately $8.3 billion of assets, including around $1.5 billion for UK-based clients. It acts as a sub-adviser to OZ Management (of which it is a wholly-owned subsidiary), and has a London-based investor relations team to market investment products to existing and prospective clients in the UK and elsewhere in Europe. Such clients include financial institutions, endowment funds, foundations, pension funds, insurance companies, high net-worth individuals and aggregators who act on behalf of large numbers of smaller investors. Around 40 investment professionals work at Och-Ziff Management's London office in Argyll Street.
The Och-Ziff Group does not advertise its services. As a result of its success, however, the Och-Ziff Group has received substantial press coverage in the UK, including numerous articles in The Financial Times, The Times,...
To continue reading
Request your trial
-
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation (No 3)
...series or prior to the launch of the TV series in the UK and referred to dicta from Arnold J's judgment in the case of Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch) in which he suggested that the Defendant in that case should have carried out a trade mark search. 40......
-
Bayerische Moteren Werke Aktiengesellschaft v Edward Ronayne t/a BMWcare)
...ACT 1996 S14(2)(B) EEC DIR 2008/95 ART 5(1)(B) OCH-ZIFF MANAGEMENT EUROPE LTD & ANOR v OCH CAPITAL LLP & ORS 2011 BUS LR 632 2011 ECC 5 2011 ETMR 1 2011 FSR 11 2010 EWHC 2599 (CH) L'OREAL SA & ORS v BELLURE NV & ORS 2010 AER (EC) 28 2010 BUS LR 303 2009 ECR I-5185 2009 ETMR 55 2010 RPC 1 RE......
-
Moroccanoil Isreal Ltd v Aldi Stores Ltd
...goods is complete. She submitted that 'initial interest confusion' can suffice and referred to Och-Ziff Management v OCH Capital [2010] EWHC 2599 (Ch); [2011] FSR 11. 18 Mr Edenborough argued the opposite: if a purchaser is misled initially but his misunderstanding is dispelled before he ma......
- Advanced Perimeter Systems Ltd v Keycorp Ltd
-
IP Snapshot - December 2010
...Management Europe Ltd (2) OZ Management LP v (1) OCH Capital LLP (2) Union Investment Management Ltd (3) Thomas Tadeus Antoni Ochocki [2010] EWHC 2599 (Ch) (High The Claimants' dispute related to a Community Trade Mark (CTM) for OCH-ZIFF and the use by the Defendant, OCH Capital, under the ......
-
Territorial overlaps in trademark law: the evolving European model.
...See, e.g., DataCard Corp. v. Eagle Techs. Ltd. [2011] EWHC (Pat) 244 [276]-[289] (Eng.); Och-Ziff Mgmt. Eur. Ltd. v. OCH Capital LLP [2010] EWHC (Ch) 2599 (Eng.); cf. Interflora Inc. v. Marks & Spencer PLC [2014] EWCA (Civ) 1403 (96) Cf. DataCard, [2011] EWHC (Pat) 244 at [291] ("[Reput......
-
THE SENSE AND SENSIBILITY IN THE ANTI-DILUTION RIGHT
...Healthcare Ltd v Asda Stores Ltd [2012] ETMR 17 (CA); [2011] FSR 1 (HC). 123 Och-Ziff Management Europe Ltd v OCH Capital LLP [2011] FSR 11 (HC). 124Starbucks Corp v Wolfe's Borough Coffee Inc559 F Supp 2d 472 (SDNY, 2008); 588 F 3d 97 (2d Cir, 2009); 101 USPQ 2d 1212 (SDNY, 2011). There wa......
-
Intellectual Property Law
...infringement contexts was succinctly summarised by Arnold J in the infringement case of Och-Ziff Management Europe Ltd v Och Capital LLP[2011] FSR 11 at [76] as follows: It is now clear that there is an important difference between the comparison of marks in the registration context and the......
-
Intellectual Property Law
...1999). This doctrine has also found its way into the trade mark law of the UK: see, eg, Och-Ziff Management Europe Ltd v Och Capital LLP[2011] FSR 11. 19.22 Does the trade mark law in Singapore recognise the doctrine of initial interest confusion? Should it? These questions have now been an......