BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Fetter Lane, London, EC4A 1NL
B e f o r e :
| (1) FIL LIMITED
(2) FIL INVESTMENT SERVICES LIMITED
|- and -
|(1) FIDELIS UNDERWRITING LIMITED
(2) FIDELIS INSURANCE BERMUDA LIMITED
(3) FIDELIS INSURANCE HOLDINGS LIMITED
(4) FIDELIS MARKETING LIMITED
Charlotte May QC and Daniele Selmi (instructed by Bristows LLP) for the Defendants
Hearing dates: 17-19, 24 April 2018
Crown Copyright ©
MR JUSTICE ARNOLD :
|The Trade Marks||4-6|
|The signs complained of||7-23|
|The US dispute||60-61|
|The UK dispute||62|
|Key legislative provisions||64-70|
|Relevant dates for assessment||71-73|
|The average consumer||74-75|
|Validity of the Trade Marks: descriptiveness||76-84|
|Interpretation of the specifications of services of the Trade Marks||85-92|
|Validity of the Trade Marks: clarity and precision of the||93-95|
|Specification of services|
|Revocation of EU925 and UK490: non-use||96-115|
|Pensions structured as unit-linked insurance polices||101-104|
|Reinsurance of unit-linked insurance polices||105|
|A fair specification||113|
|Validity of UK598, EU598, UK888 and EU377: bad faith||116-132|
|Infringement under Article 9(2)(b) of the Regulation/Article||133-156|
|10(2)(b) of the Directive|
|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|
|Infringement under Article 9(2)(c) of the regulation/Article||157-164|
|10(2)(c) of the Directive|
|Reputation of EU925 and UK598||159|
|Detriment to the distinctive character of EU925 and UK598||161|
|Disposition of the counterclaim||165|
|Summary of principal conclusions||167|
The 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 signs complained of
The US dispute
The UK dispute
Key legislative provisions
Signs of which a Community trade mark may consist
A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Absolute grounds for refusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
Use of Community trade marks
1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
Conditions with which applications must comply
1. An application for a Community trade mark shall contain:
(c) a list of goods and services in respect of which the registration is requested;
3. An application for a Community trade mark must comply with the conditions laid down in the Implementing Regulation …
Goods and services in respect of which Community trade marks are applied for shall be classified in conformity with the system specified in the Implementing Regulation.
Grounds for revocation
1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …
2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.
Absolute grounds for invalidity
1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings,
(b) where the applicant was acting in bad faith when he filed the application for the trade mark.
3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only."
Signs of which an EU trade mark may consist
An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the Register of European Union trade marks, ('the Register'), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor."
Designation and classification of goods and services
1. Goods and services in respect of which trade mark registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 ('the Nice Classification').
2. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.
3. For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in this Article.
4. The Office shall reject an application in respect of indications or terms which are unclear or imprecise, where the applicant does not suggest an acceptable wording within a period set by the Office to that effect.
5. The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.
8. Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.
The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Office shall take appropriate measures to amend the Register accordingly. The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 18, Article 47(2), Article 58(1)(a), and Article 64(2).
EU trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.
"the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark."
Relevant dates for assessment
The average consumer
Validity of the Trade Marks: descriptiveness
Interpretation of the specifications of services of the Trade Marks
"Financial services are the economic services provided by the finance industry, which encompasses a broad range of businesses that manage money, including credit unions, banks, credit-card companies, insurance companies, accountancy companies, consumer-finance companies, stock brokerages, investment funds, individual managers and some government-sponsored enterprises. Financial services companies are present in all economically developed geographic locations and tend to cluster in local, national, regional and international financial centers such as London, New York City, and Fujian."
The entry goes on to discuss various types of financial services, including insurance. In my view this definition accords with ordinary use of the expression "financial services". For example, and importantly from the consumer perspective, it accords with the fact that, as discussed above, the FSCS covers insurance services (including but not limited to unit-linked pension policies as discussed in paragraph 39 above).
"Insurance services are a significant factor in the investment industry, therefore, these services are properly classified in Class 36. The purchase of insurance is a monetary investment. … Furthermore, the investment industry is dependent on insurance funds for its very existence."
Validity of the Trade Marks: clarity and precision of the specification of services
Revocation of EU925 and UK490: non-use
i) pensions structured as unit-linked insurance policies;
ii) reinsurance of unit-linked insurance policies;
iii) annuities; and
iv) annuity brokerage.
Validity of UK598, EU598, UK888 and EU377: bad faith
"Accordingly, it is possible that, where the proprietor of a Community trade mark files a repeat application for the same mark in order to avoid the consequences entailed by total or partial revocation of earlier trade marks for reasons of non-use, that fact is something which may be taken into account in order to assess whether the proprietor acted in bad faith. Furthermore, that reading coincides with the interpretation adopted in the Guidelines relating to proceedings before OHIM."
Infringement under Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive
Infringement under Article 9(2)(c) of the Regulation/Article 10(2)(c) of the Directive
Disposition of the counterclaim
Summary of principal conclusions
i) the Trade Marks are invalid in so far as they are registered for "fidelity insurance", but this can be dealt with by amending the specifications so as to replace "insurance services" by "insurance services except fidelity insurance";
ii) it is arguable that the Trade Marks are invalid in so far as they are registered for "financial services";
iii) EU925 and UK490 must be revoked for non-use in relation to "insurance services" other than "pensions-related insurance services";
iv) it is arguable that Fidelity applied to register UK598, EU598, UK888 and EU377 in bad faith;
v) Fidelis have not infringed the Trade Marks in any event; and
vi) Fidelity's claim for passing off is dismissed.