FIL Ltd v Fidelis Underwriting Ltd [2018] EWHC 1097 (Ch)

11 May 2018

Charlotte May QC appeared for the defendants in this trial relating to trade mark infringement and validity, and passing off. The claimant alleged that the defendants had infringed trade marks containing the word FIDELITY, registered in respect of financial, insurance and investment services, by their use of the sign FIDELIS for insurance underwriting services. The defendants counterclaimed for a declaration that the marks were invalid and should be revoked for non-use

The court declared that the marks were descriptive of “fidelity insurance”, an established and recognised term in the field of insurance, and so the specifications should be amended to “insurance services except fidelity insurance”. Two of the marks were also revoked for non-use in relation to “insurance services” other than “pension-related insurance services”. The court held that the resolution of the issues relating to the registrations for “financial services” and whether the claimants had acted in bad faith would have to await the outcome of the reference in Sky plc v SkyKick UK Ltd [2018] EWHC 155 (Ch).

In any event, the court held that the defendants had not infringed the marks as there was no likelihood of confusion, and the use of the mark had not damaged the distinctive character of FIDELITY or taken unfair advantage of its reputation. The passing off claim was also dismissed.

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