Battle of the spiritual and holistic therapists over ‘Archangel Alchemy’ trade mark

Trade mark disputes with accompanying passing off claims are nothing new. But what happens when the public being considered is fairly niche and, as such, smaller than those that would arise in your ‘everyday’ trade mark cases? Well, such a case arose before the Intellectual Property Enterprise Court (IPEC) recently, in one of the most unique contexts to date.

As succinctly and aptly described by HHJ Clarke in her opening paragraph: “This [was] a dispute between two spiritual and holistic therapists over use of the trade mark ‘ARCHANGEL ALCHEMY’ to sell metaphysical/spiritual education and coaching courses which aim to connect participants with archangels”.

Need more be said? Let’s see what happened.

*starts reading* so what is Archangel Alchemy...?
(Credit: me)

Background

The claimant, Claire Stone, is a spiritual author and holistic therapist who has been providing spiritual coaching and education services for over 20 years, both online and in person via her website, and is the author of best-selling book, ‘The Female Archangels’.

The defendant, Alexandra Wenman, is also a spiritual author and holistic therapist, as well as a past editor of and writer for ‘Prediction Magazine’, one of the longest-running mind, spirit and body magazines available at the time. Since 2011, she had provided spiritual and holistic education, training and therapy services to the public in person and online.

From 3 October 2019, Stone was the registered proprietor of the UK word trade mark, “ARCHANGEL ALCHEMY”, in respect of “training course - for soul development - yogic sciences - quantum physics - altered states of awareness - relaxation - holistic health - celestial beings - natural living” in class 41.

Stone had began marketing an online ‘metaphysical education’ course under the brand ‘ARCHANGEL ALCHEMY’ in or around July 2019, with the course first starting on 23 September 2019 and running until 21 September 2020. However, in February 2020, it came to her attention that Wenman had also been marketing and offering for sale an online course by reference to the sign ‘ARCHANGEL ALCHEMY’ from the previous autumn on her website and social media accounts.

Stone claimed that such use by Wenman infringed her trade mark pursuant to s10(1) of the Trade Marks Act 1994 (‘TMA’) (use in the course of trade of a sign that is identical for goods/services which are also identical with those for which it is registered).

In response, Wenman claimed that she had been offering such services under and/or by reference to the signs ‘The Archangel Alchemist’ and ‘Archangel Alchemy’ since around 2010, and had accrued goodwill in those signs. As such, Wenman claimed: (i) that Stone’s ‘ARCHANGEL ALCHEMY’ trade mark was invalid, pursuant to s5(4) and s5(4A) TMA (setting out, namely, that a trade mark shall not be registered by virtue of an earlier right existing, i.e. due to laws of passing off); (ii) that Wenman had a defence under section 11(3) TMA (that the registered trade mark is not infringed by use in the course of trade of an earlier right - passing off - used prior to registration of the registered trade mark in question); as well as several other grounds if Wenman could not prove that she had goodwill. A counterclaim for passing off and a declaration of invalidity of Stone’s trade mark was also submitted.

The Judgment

A finding of passing off requires the ‘classical trinity’: goodwill; misrepresentation; and damage (resulting from the misrepresentation).

In the proceedings, Wenman had to demonstrate that she had generated enough goodwill to sustain a claim in passing off through her use and/or reference to her own ‘Archangel Alchemy’ signs prior to 7 September 2019 (the date HHJ Clarke determined was the first public use of ‘ARCHANGEL ALCHEMY’ by Stone).

It was confirmed that goodwill would have to be actual goodwill in the jurisdiction concerned, and would involve the present of clients or customers in the jurisdiction for the products or services in question (Lord Neuberger in Starbucks, [47]). Reputation on a relatively small scale would also still attract the protection of a claim in passing off, though this would still be subject to a de minimis threshold. A claim in passing off could therefore not be sustained to protect goodwill that any reasonable person would consider to be trivial (Laddie J in Sutherland v V2 Music Ltd, [22]).

Wenman claimed that her business was small but profitable, and that she had, since 2010, used the signs in question as descriptors of herself and the services she provided.

In light of the evidence and submissions presented, HHJ Clarke was satisfied on the balance of probabilities that the columns in Prediction magazine contributed to Wenman’s reputation as ‘The Archangel Alchemist’, and served as a clear example of Wenman using ‘Archangel Alchemy’ in the course of trade. HHJ Clarke also found that evidence provided by customers - who stated that they considered Wenman to be the ‘Archangel Alchemist’ - was valuable evidence of reputation or goodwill.

Despite it being apparent that Wenman was more focused on growing her business by word-of mouth, through appearances in person and through her website, HHJ Clarke said it was instead to be queried whether Wenman had used the signs in the course of trade on a sufficient scale to generate actual goodwill in the jurisdiction, in a manner which was more than trivial.

Answer: inconclusive
(Credit: me)

From review of Wenman’s evidence, supported by documentary evidence and that of her witnesses, it was apparent to HHJ Clarke that a lot of her work involved Archangel Alchemy processes and techniques. Wenman herself had estimated that 15-25% of her work related to Archangel Alchemy. Whilst it had been submitted by opposing counsel that Wenman may have exaggerated this figure, HHJ Clarke went so far as to suggest that even if only 5% or 1% of her work was attributable to Archangel Alchemy (though HHJ Clarke considered on the evidence that it was more than that), this would be more than trivial and would have generated sufficient actual goodwill to be capable of damage by reason of a misrepresentation.

HHJ Clarke dismissed claims that ‘The Archangel Alchemist’ and ‘Archangel Alchemy’ were common figurative or poetic language used in the field in which the business operated, and that Wenman’s business (and any goodwill) was attributable to her own name and not the mark in question. Rather, as evidenced by witnesses who considered Wenman to be the ‘Archangel Alchemist’ practising ‘Archangel Alchemy’, Wenman’s own evidence that she “wanted a name that would enable the course to stand out and be noticed by potential customers”… “because it is different”, and that the mark was akin to a subsidiary mark (albeit one that was not registered), it was found that ‘Archangel Alchemy’ was being used by Wenman as an indicator of origin.

Adding that there was misrepresentation (in that customers may attend Stone’s course thinking it was really Wenman’s course), and that Wenman’s alternate defences raised (if goodwill was not found) did not need to be considered, HHJ Clarke concluded that: Stone’s ‘ARCHANGEL ALCHEMY’ trade mark would be invalid; that Wenman’s claim in passing off would succeed; and that Stone’s claim for infringement of the trade mark would consequently fail and be dismissed.

Comment

What was particularly interesting about this case was the quantification of the use of ARCHANGEL ALCHEMY with regards to Wenman’s general business. Ordinarily, the mark in question in such proceedings is the main mark that the parties use, as opposed to be a ‘subsidiary’ one. However, it does emphasise the importance of use of the mark beyond actual (or estimated) percentage use in the grand scheme of the business, such that Wenman had nonetheless demonstrated that she had accrued the necessary goodwill.

In EU case law, a similar standard has been upheld. In Anheuser-Busch (C-96/09P), the CJEU noted that in order to be capable to prevent registration of a new sign, the sign relied on in opposition “must actually be used in a sufficiently significant manner in the course of trade”, with “account [to] be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance.” This was in the context of an EU trade mark opposition, relying on Article 8(4) of Council Regulation (EC) No 40/94 - now Article 8(4) of EUTMR) - which also takes into account usages of such non-registered marks (though also requiring more than mere local significance).