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Friday, 20 June 2008

Lloyd's hanging on, but only just ...

As yet unavailable anywhere except the LexisNexis Butterworths subscription-only service is Lloyd's and another v Lloyd's Publishing Group Ltd, a Chancery Division (England and Wales) decision of Mr Justice Warren.

The principal claimant in this case was Lloyd's, an insurance business that has been trading in one form or another since 1688. The second claimant, Informa, published the Lloyd's List Law Reports [query: aren't these now just the Lloyd's Law Reports?] which Lloyd's originally published itself. They owned the 'Lloyd's' and 'Lloyd's List' registered trade marks. The defendant was an small private company that claimed to be a leading global maritime industry information service [IPKat comment: at this point you just know that the defendant is going to get crushed. The only questions are (i) on what grounds and (ii) how badly?]. In the course of its business it sought subscriptions to its website and sold advertising space in its publications. The claimants found out that the new Lloyd's was contacting several of their clients who then placed advertisements in the latter's publications in the mistaken belief that those advertisements were to be placed in Informa's publications -- a mistaken belief which the new Lloyd's did not take the opportunity to correct.

Unsurprisingly the claimants sued for passing off and trade mark infringement, objecting that the interlopers were offering similar services in the same markets, thus causing a likelihood of confusion, and that they had taken unfair advantage of, or had traded on, their established reputation. Nothing daunted, the new Lloyd's counterclaimed for the partial invalidity of the claimants' trade marks. Going for the jugular, the claimants applied for summary judgment on the basis that the new Lloyd's had no reasonable prospect of defending the claim at trial or in making out its counterclaim.

They missed the jugular, but still splatted their foe. Warren J -- on the evidence before him at the summary stage -- agreed that some aspects of the defence and counterclaim were fanciful. However, he couldn't rule that it had no reasonable prospect of defending the claim at trial. By way of consolation he agreed that there was sufficient evidence to grant the old Lloyd's and Informa interim injunctive relief.

Says the IPKat, if the defendant is prudent, it will take the hint, cut its losses (or profits ...) and mimic the name of a claimant which does not also publish, among its stable of titles, the highly apposite Trademark World.

Lloyd's apostrophe here
More confusing Lloyds here and here

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