In FIL Ltd & Anor v Fidelis Underwriting Ltd &
Ors ([2018] EWHC 1097 (Pat)), it was held that use of
FIDELIS for insurance underwriting does not infringe FIDELITY
for insurance or financial services. It is important to note
that the validity of their registrations rests on the guidance
from the CJEU in Sky v SkyKick ([2018] EWHC 943
(Ch)) in relation to two questions: "(1) whether a trade
mark could be declared wholly or partially invalid on the
ground that some or all of the terms in the specification are
lacking in sufficient clarity or precision; and (2) whether it
can constitute bad faith to apply to register a trade mark
without any intention to use it in relation to the specified
goods or services."
Fidelity is a financial services business founded in 1969,
managing around £149bn ($199 billion) in assets and owner
of a portfolio of registrations for FIDELITY for, among others,
"financial services" and "insurance services". Fidelity issued
proceedings in December 2016 at the High Court alleging trade
mark infringement and passing off. Fidelis (a specialist
insurance underwriter started in 2015 which has raised $1.5bn
in capital and now handles several thousand insurance
contracts) counterattacked claiming that the Fidelity
registrations were invalid. The Court found the following:
"Fidelity" is descriptive of "insurance services" as this is a
known type of insurance; there was only use of FIDELITY in
relation to "insurance services" associated with pensions;
"financial services" potentially lacks sufficient clarity and
precision to be valid but as this relates directly to the
guidance requested from the CJEU in Sky, this
conclusion is provisional; the FIDELITY marks were potentially
registered in bad faith for lack of intent to use but the lack
of express requirement of an intention to use in EU regulations
or directives may be overcome by an implicit requirement (which
is subject to guidance by the CJEU in Sky); the
FIDELITY marks were not registered in bad faith due to a
programme of refiling to avoid non-use cancellation actions as
its trade mark filings differed in territory and services
covered, but again this conclusion was provisional; and the
registrations were not infringed as the average consumer of the
services of Fidelis is "knowledgeable" and exercises "a high
degree of care and attention" and is therefore unlikely to be
confused.
Until the CJEU has provided guidance in Sky,
invalidity arguments about specifications lacking sufficient
clarity and precision, or marks registered in bad faith will be
raised regularly, increasing the likelihood of right holders
settling on less favourable terms to avoid a challenge to the
validity of their registrations.
|
| Rebecca Dobson |
Chapman IP
Kings
Park House, 22 Kings Park Road
Southampton
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Tel:
+44 (0) 23 8000 2022
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