Claridge Candles' Claridge's Clash

The parties and the trade marks

Proceedings for trade mark infringement and passing off were brought in October 2018 before the Intellectual Property Enterprise Court by the owner of the famous London Mayfair hotel, Claridge's, against a newly established seller of self-branded scented candles and diffusers, Claridge Candles Limited and its owner/sole director.

Claridge's owned two UK trade mark registrations for the word mark "CLARIDGE'S". One mark was registered solely for goods in Class 21 (household utensils). Prior to the start of the trial, this mark was voluntarily surrendered, and the specification of the second mark (the "Mark") narrowed.

On 8 January 2018, Claridge Candles filed an application for a UK trade mark for the word mark "CLARIDGE", to cover a number of specified goods in classes 3 and 4, which would subsequently appear on the company's candles and diffusers. Claridge's opposed this application and the UK IPO stayed the opposition pending the court proceedings.

There were six key issues for the judge, Mr Recorder Douglas Campbell QC, to consider in this matter which ultimately reinforced the importance having a luxury brand and widespread name recognition in the defence of trade marks.

Infringement of the Claimant's Mark

  1. Whether the Claimant's Mark had an enhanced distinctive character and/or reputation in the UK in relation to any of the goods or services in relation to which it was registered, and if so, which of them.

    The focus here was on reputation of the Mark. Under General Motors v Yplon Case C-375/97 [2000] RPC 52, Claridge's had to demonstrate for the purposes of section 10(3) of the Trade Marks Act 1994 (the "Act") that the Mark was known "by a significant part of the public concerned by the products or services covered by that trade mark".

    A substantial amount of evidence was submitted in relation to the London hotel, including its turnover (at around £50 million or more since 2008), its marketing expenditure (~£1.5mil per year since 2008), press coverage, its BBC Two TV series and its international awards.

    In light of the evidence, Recorder Campbell QC was entirely satisfied that the Mark had a "very substantial reputation" in the UK when used in relation to hotel services, indicating that the mark was in use at least in relation to class 43.

  2. Whether the Defendants' acts done in relation to their CLARIDGE sign constituted infringement pursuant to section 10(3) of the Act.

    To infringe under section 10(3)...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT