Thomson Holidays Ltd v Norwegian Cruise Line Ltd

JurisdictionEngland & Wales
CourtCourt of Appeal
JudgeLord Justice Aldous, Lord Justice Waller, Lord Justice Scott Baker
Judgment Date17 Dec 2002
Neutral Citation[2002] EWCA Civ 1828
Docket NumberCase No: A3/2002/0683

[2002] EWCA Civ 1828

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM CHANCERY DIVISION

Mr DAVID YOUNG QC (SITTING AS A DEPUTY

JUDGE OF THE CHANCERY DIVISION)

Royal Courts of Justice

Strand,

London, WC2A 2LL

Before

Lord Justice Aldous

Lord Justice Waller and

Lord Justice Scott Baker

Case No: A3/2002/0683

Between
Thomson Holidays Limited
Appellant/Claimant
and
Norwegian Cruise Line Limited
Respondent/Defendant

John Baldwin QC and James Abrahams (instructed by Mr Henry Bankes, Thomson Travel Group Plc) for the Appellant

Michael Bloch QC and John Hornby (instructed by Clifford Chance) for the Respondent

Lord Justice Aldous
1

The claimants, Thomson Holidays Limited, (Thomson), appeal the judgment and order of Mr David Young QC of 5th March 2002 who sat as a deputy judge of the Chancery Division.

2

Thomson are the registered proprietor of two trade marks consisting of the word "FREESTYLE" which were registered as of 1st October 1986. They were:

Trade Mark

Number Services

1,288,949 (the 949 mark)

Arrangement and booking of travel, tours and cruises; escorting travellers and arranging the escorting of travellers; providing tourist office services; all including in Class 39.

1,288,951 (the 951 mark)

Booking and provision of accommodation, catering services for travellers; providing of day nurseries (other than schools); leasing and rental of computers; all included in Class 42.

3

Thomson alleged that the defendant, Norwegian Cruise Line Limited, (Norwegian) had infringed those trade marks by promoting its cruises under and by reference to the mark FREESTYLE.

4

Norwegian denied infringement; it alleged that the trade marks in so far as they covered certain services including cruises were invalid for five years' non-use.

5

The judge held that the trade marks were invalid as they stood and that to avoid revocation amendments to their specifications were necessary so that they read as follows:

"1,288,949:

Arrangement and booking of travel and tours and cruises; escorting travellers and arranging the escorting of travellers; providing tourist office services; all included in Class 39 and all excluding services in relation to cruises on a cruise ship.

1,288,951:

Booking and provision of accommodation, catering services for travellers; provision of day nurseries (other than schools); leasing and rental of computers; all included in Class 42 and all excluding services in relation to cruises on a cruise ship."

6

The judge went on to consider whether the trade marks with amended specifications had been infringed. He concluded that they had not been and therefore dismissed the action. On appeal Thomson challenge the judge's conclusions as to validity and infringement.

7

Validity—It is convenient to consider validity first as infringement may depend upon the services for which the trade marks are registered.

8

In their defence and counterclaim Norwegian alleged that the trade marks were invalid and should be revoked for non-use to the extent that:

"(a) in the case of trade mark number 1288949, it covers cruises; and

(b) in the case of trade mark number 12888951, it covers cruises, day nurseries (other than schools) and the leasing and rental of computers."

9

Thomson accepted that the specification of 951 should be amended for non-use by deletion of "day nurseries (other than schools) and the leasing and rental of computers." Further in their reply they admitted that they had not promoted or offered cruises under the mark FREESTYLE for 5 years ending March 2000.

10

Revocation for non-use is provided for in section 46 of the Trade Marks Act 1994 which is as follows:

"s 46 Revocation of registration.

(1) The registration of a trade mark may be revoked on any of the following grounds—

(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non- use;

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—

(a) the date of the application for revocation, or

(b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date."

11

It was not disputed that Thomson had used FREESTYLE as a trade mark for package holidays since 1985. The judge's findings of fact as to how the trade mark had been used were contained in paragraphs 3 and 5 of his judgment.

"3. The Claimants first used their FREESTYLE mark as a brand for summer package holidays for the youth market in 1985. Youth market refers to those particularly between the ages of 18 and 30 years and indeed FREESTYLE holidays' main competitor has been Club 18–30.

Sales of holidays in the years 1985 to 1988 were relatively modest in terms of numbers and as a result use of the FREESTYLE brand for such holidays was effectively discontinued until 1993 when it was reintroduced under the style CLUB FREESTYLE at first as part of Sky Tours Holidays programme but latterly (as of 1998) on its own having its own brochure and featuring package holidays to fourteen or so resorts. Use of the word CLUB (generally in smaller print and not always juxtaposed to FREESTYLE) is to denote that the holiday is for a group of like-minded people as well as providing a "clubbers" image. There is no upper age limit but there is an age limit of 17 (with parental consent and if accompanied by some one of 18 or over).

A feature of such "Club Freestyle" holidays is that the hotel accommodation provided is generally exclusive to Club Freestyle holidaymakers. Representatives (reps) are at hand to assist in providing entertainment such as excursions including jeep safaris, day boat trips (referred to as "booze cruises" or Boat BBQ and "chill out cruises"), Freestyle Frenzy (bar crawls) etc.

In addition to such summer package holidays, since 1998 the Claimants have also sold winter Club Freestyle ski holidays marketed by Thomson Ski and Snowboarding which is a division of the Claimants. Details of such ski-holidays are incorporated in the Claimants' Ski Board Snow brochure.

5. Included in the holiday package are a number of items listed in the Claimants' Club Freestyle brochure including the return flights (e.g. on the Claimants in-house airline Britannia); coach transfers to and from the resort airport; accommodation at the chosen hotel or apartment; meals and the services of a Club Freestyle rep."

12

In paragraph 3 of his judgment the judge referred to excursions that had been organised. As examples Mr Baldwin QC, who appeared with Mr Abrahams for Thomson, took us to the 1st edition of the 2001 CLUB FREESTYLE brochure. On its front page there appears at the top left the word "CLUB" which is 3.5 cm long and 1.5 cm high. Down the left hand side appears the word "FREESTYLE" about 28.5 cm in length and 4 cm high. The brochure contains about 100 pages promoting and explaining 14 Freestyle holidays. On page 5 there appears an explanation of what will be provided which includes the statement that "There is loads organised in your resort—beach parties with free bars and food, cruises drenched in sun and sangria and wet 'n' wild parties in the park."

13

The advertised holiday to Majorca provides transport, holiday accommodation with beach bars, and day trips. One of such trips includes "A chilled out 3 hour boat tour in a brand new 100 ft catamaran. Drinks are included, but its no booze cruise". The holiday to Gran Canaria is similar with a "club cruise" available to "Cruise the waves while a top DJ plays!" The holiday to Corfu has available a "Cruise to Paxos—Take it easy and enjoy the sun, the sea and the sand on this chilled out cruise." Similar cruises are available with some of the holidays at other resorts.

14

The brochure shows, as the judge found, that Thomson have used "FREESTYLE" as a trade mark to denote origin in respect of summer holidays. Further, as the judge found, FREESTYLE has been used by Thomson in relation to winter ski packaged holidays.

15

The judge held that Norwegian had also used FREESTYLE as a sign. He said:

"7. In May 2000 the Defendants first launched "Freestyle Cruising" on their cruiser the Norwegian Sky since when the Freestyle Cruising concept has been adopted by the whole fleet with the exception of S/S Norway. In their 2001/2002 brochure Freestyle Cruising is depicted on the front and back covers in wave logo form as part of the title "NCL Norwegian Cruise Line, Freestyle Cruising". In addition the word FREESTYLE is depicted on the front cover in freehand with the words World-wide Cruising in large capitals underneath and on the back cover Freestyle is coupled with various on board activities, namely Dining, Service, Attire, Activities, Gratuities, Disembarkation—all part of the world of Freestyle Cruising. (see Exhibit X1). As an integral part of a number of the Freestyle Cruising holiday cruises (e.g. Cruise and Stay; Cruise and Tour) the Defendants arrange tours or excursions which may or may not involve arranging hotel accommodation as part of the tour (see e.g. Exhibit X2).

19. I have no doubt that the Defendants' use of the word...

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