Intellectual Property – Trade Mark – Community Trade Mark – Infringement – Stichting BDO v BDO Unibank Inc [2013] – Regulation 207/2009

In the recent case of Stichting BDO v. BDO Unibank Inc [2013], the High Court held that a Community trade mark for the letters “BDO” owned by Stichting was not infringed. This was down to the fact that, BDO Unibank Inc. was able to rely on its own name defence. In particular, despite use of the mark in certain advertisements by BDO Unibank Inc , there was no evidence of: (i) actual confusion on the part of the public; or (ii) that the mark’s reputation was adversely affected by such use.

Background

• Stichting BDO (“S”) claimed that BDO Unibank Inc. (“U”) and another defendant, Sunrise Remittance (UK) Limited (“SR”) had infringed its trade mark.
• S is the owner of a Community trade mark for “BDO” registered in respect of a wide range of goods and services in classes 9, 16, 35, 36, 41 and 42.
• S (along with the other claimants) were part of an international network of accountancy and professional services firms and traded under the name BDO.
• U was a leading bank in the Philippines and also traded under the name BDO.
• SR provided a service which enabled foreign workers to transfer a proportion of earnings to their home countries.
• Although U had no trading presence in the UK, it had various arrangements with SR. The services provided by SR in the European Union, were done under the name “BDO Remit”;
• U had used the sign “BDO” in some of its advertisements, which were circulated in the EU;
• S claimed that U’s advertisements infringed its trade mark under Article 9(1)(a) of Regulation 207/2009;
• U argued that if it infringed S’ trade mark, it had a defence under Article 12(2)(a);
• S further argued that SR has infringed its trade mark by using the sign “BDO Remit”, under Articles 9(1)(b) or 9(1)(c).

The Law

Article 9

Rights conferred by a Community trade mark

1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;

(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

Article 12

Limitation of the effects of a Community trade mark

A community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:

(a)   his own name or address;

…

provided he uses them in accordance with honest practices in industrial or commercial matters.

Outcome

• As to S’ claim under Article 9(1)(a), the dispute centred around whether there was use of the sign by U within the EU.
  • Although each advertisement had to be considered individually, some elements were considered collectively. For example, the publications in which the advertisements appeared were in English and aimed at readers interested in financial matters. The services that were advertised were general or advertised under U’s investment bank services or its private banking and wealth management services. It was made clear that U was a bank in the Philippines.
  • After considering 20 advertisements individually, the judge concluded that three were targeted at consumers in the EU and thus constituted use of the sign BDO within the EU.

• As to U’s defence under Article 12(a), the judge made clear that BDO was the U’s trading name at the time of the advertisements.
  • In considering whether U used the trade mark in accordance with honest practices, the judge considered the factors in Samuel Smith Old Brewery (Tadcaster) v. Lee (t/a Cropton Brewery), such as:
    • Whether the defendant knew of the existence of the trade mark, and if not whether it would have been reasonable for it to conduct a search.
    • Whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions.
    • The nature of the use complained of, and in particular, the extent to which it was used as a trade mark for the defendant's goods or services.
    • Whether the defendant knew that the trade mark owner objected to the use of the sign complained of or, at least, should have appreciated that there was a likelihood that the owner would object.
    • Whether the defendant knew, or should have appreciated that there was a likelihood of confusion.
    • Whether there has been actual confusion and, if so, whether the defendant knew this.
    • Whether the trade mark had a reputation and, if so, whether the defendant knew this and whether the defendant knew, or at least should have appreciated that the reputation of the trade mark would be adversely affected.
    • Whether the defendant's use of the sign complained of interfered with the owner's ability to exploit the trade mark.
    • Whether the defendant had a sufficient justification for using the sign complained of.
    • The timing of the complaint from the trade mark owner.
  • The judge concluded that even if U was not aware of S’ trade mark at the date of publication of the advertisements, it should have been. The judge also concluded that overall, there was evidence of actual confusion in relation to the use of the mark and, although the mark had a reputation, there was no evidence that it had been adversely affected. Also, U’s use of the sign in the three advertisements, did not interfere with S’ ability to exploit the mark.
  • The judge agreed that U had a defence under Article 12(a).

• As to S’ claim against SR under Article 9(1)(b), after taking into account all the relevant factors, there was no likelihood of confusion on the part of the average consumer.
  • Although there was a high degree of similarity between the sign and the mark, SR’s remittance services had a low degree of similarity with the registered services.

• As to S’ claim against SR under Article and 9(1)(c), the use of the sign was not detrimental to the distinctive character of the trade mark.
  • The sign “BDO Remit” did not give rise to a link with the trade mark in the mind of the average consumer.
  • Further, the mark did have a reputation in relation to accountancy, audit and tax, but not in other services.
  • S did not adduce evidence to illustrate that the use of the sign was seriously likely to be detrimental to the distinctive character of the mark.
  • Also, SR’s use of the sign was on a small scale in a niche area of financial services, which were distinct from the fields in which S operated.

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© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.