Thomson Holidays Ltd v Norwegian Cruise Lines Ltd

Date

17 December 2002

Legislation

ss.10(1), (2), (4), s.46, and s.100 Trade Marks Act 1994

Keywords

Trade Marks; Infringement; Likelihood of Confusion; Non-use; Revocation; Specification of Goods and Services; Partial Revocation

Counsel

John Baldwin QC and James Abrahams for the Appellant, Michael Block QC and John Hornby for the Respondent

Solicitors:

Clifford Chance for the Respondent.

Judges:

Aldous LJ, Waller LJ, Scott Baker LJ.

Court:

Court of Appeal (Civ Div)

Reported:

[2003] R.P.C.32, [2002] E.W.C.A. 1828

Summary

The Appellant was the registered proprietor of 2 trade marks consisting of the word "FREESTYLE" for services in Classes 39 and 42 and including in Class 39 “tours and cruises”.

The Appellants brought proceedings against the Respondent for infringement of its marks as a result of it promoting cruises under the sign FREESTYLE. The Respondent counter claimed for revocation of the mark on the ground of non-use under s.46 TMA 1994. The Judge at first instance ordered partial revocation of the marks so that in both Classes 39 and 42 was included the caveat "all excluding services in relation to cruises on a cruise ship." On the basis of the amended specifications, he went on to find that there had been no infringement. Thomson appealed against the Judge’s findings on validity and infringement.

Each party adopted a different interpretation of the word "cruise." During the relevant period Thomson had used its marks when promoting and in relation to cruises in the form of day trips on boats but had not used it in the sense of a cruise ship holiday which was the type of use exercised by the Respondents, and which the Respondents argued was the only true meaning of the word "cruise."

The Respondents contended that since Thomson had only used the mark in relation to package holidays it could not be said to have "used the mark" (as defined in s.100 TMA 1994) in relation to services which are included as part of those holidays but which are not provided separately, one such service being arranging day cruises.

Thomson further alleged that the Judge had applied the wrong test when assessing whether there had been an infringement under s.10(2) TMA 1994 and in particular whether there was a likelihood of confusion.

Decision:

• Thomson used the mark in relation to the service of arranging and providing holidays and had not offered the services mentioned in the specification individually. In relation to those services there has been no use within the last 5 years.
• A specification which is wide and general can sometimes impinge unfairly on the rights of the public and sometimes the court is required to "dig deeper" and narrow the specification to a specific subset.
• When deciding the use that a proprietor has made of a mark, the court should inform itself of the nature of the trade and then decide how the notional customer would describe such use.
• The notional customer would describe the services provided by Thomson as "package holidays", therefore words to that effect must be added to each specification and the other services within the specification should be revoked. Further, a caveat should be added to the reference to "package holidays" so that "cruises on cruise ships" are excluded (as the appellant had not used the mark for these services)
• In assessing whether there had been infringement the judge had failed to follow the guidance of the ECJ in the Canon ([1999] R.P.C. 117) and Lloyd ([2000] F.S.R. 77) cases; in particular, rather than considering whether there was a risk "that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, economically linked undertakings constitute a likelihood of confusion", he asked whether the public would actually believe that the product was that of the proprietor or an associated product. Further, he failed to make allowance for imperfect recollection.
• Since the judge had applied the wrong test in relation to infringement it was open to the CA to re-consider the issue. When assessing whether there has been infringement one has to compare the use by the respondent of the sign with the normal and fair use of the mark by the proprietor.
• Even though cruises on cruise ships were excluded from the specification there was never the less a risk that the average consumer (taking into account imperfect recollection) may believe that a package holiday in the form of a cruise on a cruise ship could originate from the same source or an economically linked source as other types of package holiday such as those offered by the appellant when the 2 types of holiday were sold through the same trade channels and identical marks were used. Accordingly there was infringement.