|This wasn't quite what the IPKat|
meant about an inside story ...
So what happened here to cause Vos J -- the only judge in the Chancery Division, and one of only two judges in the entire High Court, to possess a three-letter surname -- to reach this conclusion? The story goes like this. United Airlines is a well-known US airline. United Airways Bangladesh Limited, to give the company's full name, is a less well-known Bangladeshi airline. Said United Airlines, United Airways was both passings itself off and infringing its UNITED and UNITED AIRLINES trade marks by employing the abbreviated term UNITED AIRWAYS, in either English or Bengali script, on its seven-aircraft fleet in flights between Dhaka and London from 2009.
Leaving no trade mark stone unturned, United Airlines sought summary judgment and alleged pretty well every kind of infringement known to European man -- same mark/same services; similar mark/same services and a likelihood of confusion and takng unfair advantage of its reputed marks without due cause, thereby diluting them. No way, said United Airways: the marks didn't look alike; the airlines were different, flew different routes and had different point-of-sale outlets; consumers wouldn't be confused and in any event could do their own research if they wanted to check, and so on.
Vos J granted United Airlines' application for injunctive relief straight off on the basis that there was no way that any defence to the action could succeed. In his view it was obvious that the parties' respective marks were not truly identical since the bits after the word "United" were different. However it has to be asked whether, on a global appreciation, the differences were so insignificant that they might go unnoticed by the average consumer, this being a question of fact [how good it is to see that, after over 20 years of harmonised trade mark law in the EU, there are still questions of fact and that this test has not been relentlessly hammered into a question of law]. "AIRLINES" and "AIRWAYS" were not synonymous but, when looked at from the point of view of an average consumer, they effectively conveyed the same meaning. This being so, the average consumer, being unconcerned with corporate identity, would be as likely as not to consider that the Bangladeshi operation was United Airlines' subsidiary. Accordingly, viewed as a whole, the differences between the signs were so insignificant that they would go unnoticed by the average consumer and the two marks therefore sufficiently identical for a same marks/same services action under the Trade Marks Act 1994, s.10(1) to succeed. Oh, and there was one small issue concerning identity of services too: the fact that airlines fly different routes doesn't make them different services for trade mark purposes.
Regarding the similar marks/identical services claim under s.10(2) of the same Act, evidence of actual confusion was not conclusive, and rarely significant [Not much point in adducing it then? But evidence of lack of actual confusion is equally inconclusive and insignificant ...]. The average consumer was likely to be confused if, lacking intimate knowledge as to the difference between "AIRLINES" from "AIRWAYS", he relied on the imperfect picture he had of the marks and signs in his mind. The same would apply if he reached the Bangladeshi airway's website.
United Airways couldn't say they were merely using their own name when they had picked a name that had been well-established for decades -- particularly since they offered no reason why they should have chosen it. Its conduct was unfair and was caught by the unfair advantage provisions of s.10(3).
United Airlines' argument based on passing off was also irresistable. Goodwill in the company's marks was established on the evidence, as was the fact that members of the public would believe, on the basis of the similarity, that the Bangladeshi business was connected with the US one. The argument that the public could carry out research and discover that there was no link between the parties must fail [If it succeeded here, we could all kiss goodbye to the tort of passing off, since it would succeed on every occasion].
Funnily enough, after coming across this decision, whom should the IPKat bump into at the AIPPI UK Garden Party yesterday evening but a very sunny Isabel Davies, virtuoso trade mark litigator and now Consultant to Boyes Turner, the firm which acted for the victorious United in this very case. Pressed by the Kat to spill the beans on all the behind-the-scenes information that makes these cases so much fun, Isabel would not be drawn into anything less discreet than the tactful observation that "the judge looked very carefully at the evidence when he came to this conclusion, granting summary judgment. He refused leave to appeal on the basis of his view on the case". Merpel wonders whether, even if leave had been granted, United Airways might spend its money more beneficially in changing its offending livery.
The Damned United here