Compass Publishing BV v Compass Logistics Ltd (2004)
This case involved two companies with the same name, the claimant being the pan-European business consultancy Compass Publishing BV (“CP”) and the defendant the UK based Compass Logistics Ltd (“CL”) who offered management consultancy services. CL had been trading since 1995 using the name “Compass” and “Compass Logistics”. The claimants had secured a Community Trade Mark in 1996 for the word ‘Compass’ in a class including business and management consultancy. The Claimant filed three claims for infringement of its trademark. The defendant argued that the Community Trade Mark should be held invalid as by the date of the registration they, CL, had acquired a valuable and protectable goodwill in respect of the mark “Compass Logistics” and that they could have brought an action against CP using the law of passing off. The defendant argued that the mark should be declared invalid to the extent that it covered any field of business consultancy, particularly relating to logistics, where the use of “Compass” would cause confusion with “Compass Logistics”. The defendants argued that they had already built up goodwill in their name before the claimant’s registration of the mark Article 8(4) of EC regulation 40/1994 provides that: upon opposition by a proprietor of a non-registered trade mark or another sign used in the course of trade of more than a mere local significance the trade mark shall not be registered where and to the extent that pursuant to the laws of the member stage governing that sign (a) rights to that sign were acquired prior to the date of application (b) that sign confers on its proprietor the right to prohibit the use of subsequent trade mark. Mr Justice Laddie held that at although at common law the claimant of a mark could not claim to ‘own’ that mark, it would have had a protectable right under the common law and held that this would have entitled CL to use section 8(4) to attack the validity of CP’s Community trade mark. But Laddie J accepted that in this case much as CL’s goodwill extended only to a reputation with a small number of potential customers in England and Wales. It thus fell within the ‘mere local significance’ category of use and this in itself was not sufficient to invalidate CP’s community trade mark. The Claimant succeeded in relation to its case of infringement of its CTM. The Times 29 April 2004 (Judgement March 24 2004).
COMMENT : One area of the music industry which has created a number of disputes recently is band names – the ‘Liberty v Liberty X’ and ‘Blue v Blue’ litigation being good examples. This is an interesting review of how the goodwill attached to say a band’s name can be protected. Clearly a Community Trade Mark is a powerful tool to protect a name on a European wide basis in all EU member states. It is usually good advice to any artist or band to seek a trademark for their band or performing name and Robbie Williams has recently secured a trade mark in his name. There is only a limited mechanism to challenge the validity of a registered CTM and here the defendant’s claim failed because they had no trademark only goodwill which they could defend by passing off – but this was held to be only a ‘more local’ significance in their brand – not enough to displace the claimant’s Community trade mark which then prevailed. If CL had managed to acquire a UK trade mark this would have invalidated the CTM meaning that CP would have had to register their mark ex-UK by converting their CTM into national marks in those territories where the earlier mark was not registered. An earlier mark would also have prevented any application for a CTM.
See Previous Law Updates:
APRIL 2004: New York Mets Gain UK Mark Registration
APRIL 2004: ARTICLE: United Kingdom: Trade Mark Registration – v – Trade Mark Use: A Costs/Risk Analysis
FEBRUARY 2004: Robbie Williams Trademarks His Name
AUGUST 2003: ‘Blue’ Name Dispute Results In Out Of Court Settlement