Property Renaissance Ltd T/A Titanic Spa v (1) Stanley Dock Hotel Ltd T/A Titanic Hotel Liverpool (2) Stanley Dock Properties Ltd T/A Titanic Hotel Liverpool (3) Titanic Trademark Ltd (4) Titanic Quarter Ltd

Hearing dates: 3, 4 & 7 November 2016

Introduction

This is a battle about trade marks which include the name "Titanic". Property Renaissance Ltd ("Titanic Huddersfield") trades under the name "Titanic Spa". It runs a luxury spa business which is located in an Edwardian former textile mill known as Titanic Mills. Titanic Mills was constructed in 1911 and was so named because of its large size. It is a coincidence that its opening fell in the same year as the launch of the ill-fated ocean liner, the RMS Titanic. Titanic Spa opened in 2005 and has been successful. The turnover of the business in 2015 was £4.8 million. It now offers overnight accommodation in 33 serviced apartments.

Titanic Huddersfield is the registered proprietor of UK Trade Mark No. 2572423 for the words "Titanic Spa" ("the Titanic Spa mark"). The Titanic Spa mark was filed on 16 April 2011 and registered on 10 June 2011 in respect of various services in classes of 35, 41, 43 and 44. In March 2015, Titanic Huddersfield brought a claim for infringement of the Titanic Spa mark and passing off in the Intellectual Property Enterprise Court ("the IPEC claim") against Stanley Dock Hotel Limited and Stanley Dock Properties Limited ("Titanic Liverpool"). Titanic Liverpool operate a well-known and successful hotel under the name "the Titanic Hotel Liverpool". This hotel opened in June 2014, following promotion from October 2013 onwards. From February 2014 publicity materials included references to a spa in the hotel, and from April 2014 such materials referred to the spa as the "T-Spa". The T-Spa did not open until November 2014 and was formally launched in March 2015.

By letters sent in August 2014 and November 2014, Titanic Huddersfield complained about use of the name "T-Spa" at the Titanic Hotel Liverpool. From December 2014, the spa was rebranded as "the Spa". A further rebranding exercise was completed in April 2016 and the spa was renamed "Maya Blue Spa". However, Titanic Huddersfield maintains its claim against Titanic Liverpool in the IPEC claim, and complains about use of "Titanic" in the name of the hotel.

Titanic Liverpool operates its hotel under licence from Titanic Trademark Limited and Titanic Quarter Limited ("TTL" and "TQL", collectively "Titanic Belfast"). Each of these companies is the registered proprietor of certain trade marks in respect of or including the words "Titanic Quarter". Certain of these trade mark registrations pre-date the opening of Titanic Spa by Titanic Huddersfield, and pre-date the registration of the Titanic Spa mark. The driving force behind Titanic Belfast is Mr Patrick Doherty, who, through these and other companies, was responsible for the redevelopment of Titanic Quarter in Belfast.

Titanic Quarter is the biggest property development scheme ever undertaken in Northern Ireland and is one of Europe's largest regeneration schemes. The Titanic Belfast and Titanic Liverpool companies are under the substantial ownership and control of Mr Doherty. The Titanic Hotel Liverpool was so named because of Mr Doherty's desire to expand the Titanic brand into other areas with a connection to the RMS Titanic. Liverpool was an obvious choice, as the location of the headquarters of the White Star Shipping Line, and the city in which the Titanic was first registered.

In January 2015, a few months prior to issue of the IPEC claim, Titanic Huddersfield filed an application in the UK Intellectual Property Office for cancellation for non-use of UK trade mark no. 2201115 "Titanic Quarter" ("the 115 mark)". The 115 mark was filed on 24 June 1999 and registered on 25 July 2003. It was registered in respect of a variety of services in classes 36, 41, 42 and 43. By Decision O-127–16 dated 8 March 2016, the Hearing Officer, Ms. Ann Corbett, concluded that the application for cancellation of the 115 mark succeeded in full ("the UKIPO Decision"). Subject to any successful appeal, she decided that the 115 mark would be revoked from 26 July 2008 under section 46(1)(a) of the Trade Marks Act 1994.

TTL, the proprietor of the 115 mark, has appealed to the High Court against the decision of the Hearing Officer not to admit certain evidence which was filed shortly before the hearing. Alternatively, it contends that the relevant evidence should be admitted on appeal. Further, and whether or not the further evidence is admitted, it appeals the Hearing Officer's finding that the 115 mark should be revoked for non-use ("the Appeal").

In July 2016 Titanic Belfast and Titanic Liverpool issued a claim in the High Court for infringement of the Titanic Quarter marks by Titanic Huddersfield, by reason of its use of the name "Titanic Spa" ("the High Court claim"). As well as alleging infringement of the 115 mark, there is also an allegation of infringement of European Union Registered Trade Mark No. 3,118,544 ("the 544 mark"). The 544 mark is registered for goods and services in classes 16, 36, 37, 41 and 43, with a filing date of 21 March 2003 and the date of registration of 19 August 2004. It is a device mark which includes prominent use of the word "Titanic" as shown below:

In January 2015 Titanic Huddersfield also commenced an action in the EU Intellectual Property Office to revoke the 544 mark for non-use. However, that action has not yet been heard, and it is common ground that I shall proceed on the basis that the 544 mark is valid.

At a hearing on the 28 July 2016, Norris J ordered that the IPEC claim, the High Court claim and the Appeal should all be heard together. This judgment deals with all of those proceedings.

It will be seen from this complex procedural history that Titanic Huddersfield seeks to injunct Titanic Liverpool from continuing to use the word "Titanic" as part of the name of its hotel, and Titanic Belfast and Titanic Liverpool seek to injunct Titanic Huddersfield from continuing to use the word "Titanic" as part of the name of its spa. Captain Arthur H Rostron, who attempted to rescue survivors from the wreck of the RMS Titanic, wrote in his log that:

"Icebergs loomed up and fell astern and we never slackened. It was an anxious time with the Titanic's fateful experience very close to our minds."

This seems a reasonable description of the commencement, continuance and possible outcome of this dispute. Both sides have valuable businesses, and this is very high risk litigation which puts in jeopardy the goodwill which Titanic Huddersfield and Titanic Liverpool have built up.

The issues

The following is a brief list of issues in the three sets of proceedings. Depending on the conclusions that I reach, it may not be necessary to decide all of these issues:

i) Did the Hearing...