Iona Berkeley acted as junior counsel for the Respondent “Delta Air Lines” in a High Court Appeal against the decision of a Hearing Officer in the UK IPO Trade Marks Registry in respect of an Application under section 47(2) of the Trade Marks Act 1994 (“TMA”). Delta Air Lines (the Applicant/Respondent) sought a declaration of invalidity of UK Trade Mark No. 3108603 for the word ‘DELTA’ whose proprietor was Marriott Worldwide (the Appellant/Proprietor). Delta Air Lines relied on sections 5(2)(a), 5(3) and 5(4)(a) TMA on the basis of its Earlier Trade Mark registrations for the identical mark ‘DELTA’. The Hearing Officer partially invalidated Marriott Worldwide’s Trade Mark for some services. In particular the Hearing Officer found that Marriott Worldwide’s Trade Mark should be declared invalid in respect of the class 43 services “hotel services; resort lodgings; reservations for hotel accommodations” due to a finding of a likelihood of confusion with Delta Air Line’s trade mark registrations for “air transportation services” in class 39 so upholding Delta Air Line’s section 5(2)(a) objection for these services. Further the Hearing Officer found that Marriott Worldwide’s trade mark should be declared invalid in respect of the said hotel services as well as “restaurant, bar and lounge services” in class 43 and various retail stores services and customer loyalty services in class 35 due to a finding of unfair advantage with Delta Air Line’s trade mark registrations for “air transportation services”, so upholding Delta Air Line’s section5(3) objection for these services and rejecting Marriott’s due cause Defence under this section. The Hearing Officer also decided that a co-existence agreement between Marriott Worldwide’s predecessor in title and Delta Air Lines did not amount to consent to the registration of the Delta trade mark by Marriott under section 5(5) TMA.
In its appeal, Marriott argued that: (1) the Hearing Officer had been wrong to find similarity of hotel services; resort lodgings.; reservations for hotel accommodations to air transportation services based on complementarity so therefore the Hearing Officer should have rejected the section 5(2)(a) objection in relation to these services; 2) the Hearing Officer had been wrong to uphold the section5(3) objection in relation to all the services objected to as the Hearing Officer should not have found that a link or likelihood of confusion existed in relation to any of these services and “air transportation services”; and 3) the Hearing Officer should have found that the co-existence agreement amounted to a consent under section 5(5) of the TMA or otherwise the mark in suit had been registered “with due cause” so defeating the section 5(3) objection.
Delta Air Lines supported the Hearing Officer’s decision but had also filed a Respondent’s Notice asking the High Court to uphold the Hearing Officer’s order for different or additional reasons to those given by the Hearing Officer, in particular that the matter of consent under section 5(5) had not been properly pleaded.
Ian Karet, sitting as a Deputy High Court Judge, dismissed the Appeal. He held that the Hearing Officer was entitled to reach the conclusions she did on all grounds. In particular with regards the section 5(2)(a) objection the Hearing Officer had applied the correct test in relation to whether there was a complementary relationship between the services in issue and she was entitled to reach the conclusions she had based on her experience. In particular the Court found that Marriott Worldwide’s view of the scope of judicial notice was too restrictive. In relation to the section 5(3) objection the Court’s view was that the Hearing Officer had again been entitled to come to the conclusions she had. In particular the Hearing Officer’s view on the similarity of services and analysis of link was careful and reasonable and again she was entitled to take judicial notice of matters within her experience. Finally on the co- existence agreement again the Court dismissed the Appeal as it found that the co-existence agreement was intended to operate as a co-existence agreement for specific marks principally in Hong Kong and the PRC and did not have the worldwide effect contended for by Marriott so did not provide the consent to the registration of the UK trade mark in suit. The Appeal also failed with regards Marriott Worldwide’s contention of due cause in relation to the section 5(3) objection.
In light of the above the Court did not need to consider the Respondent’s Notice but held that it would have rejected the Respondent’s arguments on the pleading issues in relation to the Respondent’s Notice.