Stichting Bdo and Others v BDO Unibank, Inc. and Others
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold,The Hon Mr Justice Arnold |
| Judgment Date | 04 March 2013 |
| Neutral Citation | [2013] EWHC 418 (Ch) |
| Docket Number | Case No: HC11C01642 |
| Court | Chancery Division |
| Date | 04 March 2013 |
[2013] EWHC 418 (Ch)
The Hon Mr Justice Arnold
Case No: HC11C01642
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Simon Thorley QC, Simon Malynicz and Jeremy Heald (instructed by Hogan Lovells International LLP) for the Claimants
Iain Purvis QC and Charlotte May (instructed by Bristows) for the Defendants
Hearing dates: 5, 6, 8 February 2013
Further written submissions 11, 22 February 2013
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 | 1-2 |
| The Trade Mark | 3 |
| The signs and uses complained of | 4-5 |
| The witnesses | 6-7 |
| Factual background | 8-33 |
| The Claimants | 8-13 |
| Unibank | 14-20 |
| Unibank's remittance services | 21-23 |
| The Second to Fifth Defendants | 24-25 |
| CBN | 26-27 |
| MMT | 28-29 |
| Sunrise | 30-31 |
| DMT | 32-33 |
| The key provisions of the Regulation | 34-35 |
| Construction of the specification of services | 36-37 |
| The Defendants' counterclaim for a declaration of invalidity | 38-49 |
| The Defendants' counterclaim for revocation | 50-88 |
| The law | 51-62 |
| Genuine use | 51-52 |
| Partial revocation: substantive aspects | 53-58 |
| Partial revocation: procedural aspects | 59-62 |
| Assessment | 63-88 |
| Procedure | 63-68 |
| Relevant period | 69 |
| Territorial extent of the use | 70 |
| Administrative services and consults related thereto (Class 35) | 71-76 |
| Consults related to secretarial services (Class 35) | 77 |
| Consults in the field of commercial risk management and commercial process management (Class 35) | 78-82 |
| Consults in the field [of] subsidies (Class 36) | 83 |
| Real estate appraisal (Class 36) | 84 |
| Consults in the field of insurance and risk management (Class 36) | 85 |
| Debt collection services (Class 36) | 86 |
| Arbitration and mediation (Class 42) | 87 |
| Conclusion | 88 |
| The relevant dates for assessment of the Claimants' infringement claims | 89-98 |
| The Claimants' claim for infringement in respect of BDO | 99-139 |
| The law | 100 |
| The first condition | 101-109 |
| Assessment | 110-111 |
| General matters | 112-118 |
| (1) The Banker | 119 |
| (2) Oxford Business Group Report — The Philippines | 120 |
| (3) Euromoney | 121 |
| (4) Fortune 500 Europe Edition | 122 |
| (5) USA Today International Edition — Philippines Supplement | 123 |
| (6) Euromoney | 124 |
| (7) Global Finance | 125 |
| (8) Euromoney | 126 |
| (9) Euromoney | 127 |
| (10) Euromoney — Private Banking and Wealth Management Guide | 128 |
| (11) Euromoney | 129 |
| (12) The Banker | 130 |
| (13) Euromoney — Private Banking and Wealth Management in Asia Guide | 131 |
| (14) Euromoney | 132 |
| (15) The Banker | 133 |
| (16) Euromoney | 134 |
| (17) Euromoney | 135 |
| (18) Euromoney | 136 |
| (19) The Daily Telegraph — Philippines Supplement | 137 |
| (20) Euromoney | 138 |
| Conclusion | 139 |
| The Claimants' claim for infringement in respect of BDO Remit | 140–176 |
| Article 9(1)(b): the law | 141–148 |
| Comparison between the services | 142–145 |
| Relevance of the defendant's reputation | 146–148 |
| Article 9(1)(b): assessment | 149–168 |
| The services relied on by the Claimants | 149–150 |
| The average consumer | 151 |
| Distinctiveness of the Trade Mark | 152–153 |
| Comparison between the Trade Mark and the sign | 154 |
| Comparison between the services | 155–161 |
| The context of the use of the sign | 162 |
| Likelihood of confusion | 163–168 |
| Article 9(1)(c): the law | 169–170 |
| Article 9(1)(c): assessment | 171–176 |
| Did the Trade Mark have a reputation at the relevant dates? | 171 |
| Does use of the sign give rise to a link between the sign and the Trade Mark in the mind of the average consumer? | 172 |
| Is the use of the sign detrimental to the distinctive character of the Trade Mark? | 173–176 |
| Unibank's Article 12(a) defence | 177–192 |
| The law | 178–179 |
| Own name | 178 |
| In accordance with honest practices | 179 |
| Assessment | 180–192 |
| Own name | 180 |
| In accordance with honest practices | 181–192 |
| Summary of conclusions | 193 |
Introduction
The Claimants are part of an international network of accountancy and professional services firms who trade under the name "BDO" ("the BDO Network"). The First Claimant ("Stichting BDO") is the owner of Community Trade Mark No. 2,419,778 for the letter combination BDO registered in respect of a wide range of goods and services in Classes 9, 16, 35, 36, 41 and 42 ("the Trade Mark"). The First Defendant ("Unibank") is the leading bank in the Philippines. It also trades under the name "BDO". It has no trading presence in the UK, but it has tie-up arrangements with a network of third party remittance providers, including the Second to Fifth Defendants. Remittance is a service which enables foreign workers to transfer a proportion of their earnings to their family back in the home country (in this case, the Philippines). These remittance services are provided under the name BDO Remit. The Claimants contend that this infringes the Trade Mark. In addition the Claimants complain of advertisements placed by Unibank in publications which circulate in the European Union. The Defendants deny infringement and have counterclaimed for a declaration that the Trade Mark is partially invalid, alternatively should be partially revoked. There is no dispute that Unibank is jointly liable for any infringements committed by the Second to Fifth Defendants.
These proceedings are part of an international dispute between the Claimants and Unibank. There are currently trade mark infringement and passing off/unfair competition claims between the parties in the Philippines, Hong Kong, California and Italy. Judgments have been handed down in the Philippines and Hong Kong. Judgment is awaited in California and the Italian action will be heard in October 2013. There are pending cancellation actions between the parties in Saudi Arabia, Oman, Taiwan, China, Japan and Singapore. There are 183 opposition actions pending in 40 jurisdictions. The situation cries out for the negotiation of a global (but perhaps geographically differentiated) co-existence agreement of the kind I discussed in Omega Engineering Inc v Omega SA [2010] EWHC 1211 (Ch), [2010] FSR 26 at [33].
The Trade Mark
The Trade Mark was applied for on 22 October 2001 and registered on 9 December 2002. The specification of goods and services includes the following services in Classes 35, 36 and 42:
" Class 35
Accountancy services; forensic accountancy, including fraud determination and fraud research; internal and external auditing; book-keeping; tax research; tax preparation; administrative services and consults related thereto; consults related to secretarial services; business investigations; commercial business investigations and commercial business consults related to insolvent companies; incorporation of companies; providing commercial and commercial business information, whether or not on-line; costs analysis and consults related thereto; providing temporary management into an organization, so-called interim management; business management assistance and consults; market research, market studies and market analysis; business management and organization consultancy; commercial business consults for companies; consults in the field of business efficiency; consults in the field of marketing; consults related to mergers, acquisitions, franchising, company liquidation and sales of companies; consults in the field of commercial risk management and commercial process management; personnel management, selection and recruitment; seconding personnel; consults in the field of personnel; personnel dismissing counselling.
Class 36
Fiscal assessments; consults related to fiscal matters; consults related to credit checks and debtor checks; actuarial services and consults related thereto; financial and fiscal research; consults in the field of investments; consults in the field subsidies; consults in the field of (obtaining) financing and loans; consults in the field of company financing; consults in the field of financial matters and taxes; real estate appraisal; real estate management; consults in the field of insurance and risk management; pension services; management of pension funds; debt collection services; trust services; providing (whether or not on-line) information in the field of insurance, financial matters and fiscal matters.
Class 42
… arbitration and mediation …"
The signs and uses complained of
As indicated above, there are two distinct limbs to the Claimants' infringement case. The first concerns the use by the Second to Fifth Defendants of the sign "BDO Remit" in relation to remittance services in the United Kingdom. Use has been made of that sign both in plain type and in the form of certain logos, but neither side suggested that the visual presentation of the logos made any difference to the assessment.
The second limb concerns the use by Unibank of the sign "BDO" in advertisements for investment banking and wealth management services in publications which circulate in the European Union. Again, use has been made of that sign both in plain type and in the form of certain logos, but neither side suggested that the visual presentation of the logos made any difference to the assessment.
The witnesses
The Claimants' principal witnesses were Gervase MacGregor, Head of Advisory Services at...
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