Stichting BDO & Ors v BDO Unibank, Inc & Ors

The Claimants are part of an international network of accountancy and professional services firms who trade under the name “BDO” (“the BDO Network”). The First Claimant (“Stichting BDO”) is the owner of Community Trade Mark No. 2,419,778 for the letter combination BDO registered in respect of a wide range of goods and services in Classes 9, 16, 35, 36, 41 and 42 (“the Trade Mark”). The First Defendant (“Unibank”) is the leading bank in the Philippines. It also trades under the name “BDO”. It has no trading presence in the UK, but it has tie-up arrangements with a network of third party remittance providers, including the Second to Fifth Defendants. Remittance is a service which enables foreign workers to transfer a proportion of their earnings to their family back in the home country (in this case, the Philippines). These remittance services are provided under the name BDO Remit. The Claimants contend that this infringes the Trade Mark. In addition the Claimants complain of advertisements placed by Unibank in publications which circulate in the European Union. The Defendants deny infringement and have counterclaimed for a declaration that the Trade Mark is partially invalid, alternatively should be partially revoked. There is no dispute that Unibank is jointly liable for any infringements committed by the Second to Fifth Defendants.

These proceedings are part of an international dispute between the Claimants and Unibank. There are currently trade mark infringement and passing off/unfair competition claims between the parties in the Philippines, Hong Kong, California and Italy. Judgments have been handed down in the Philippines and Hong Kong. Judgment is awaited in California and the Italian action will be heard in October 2013. There are pending cancellation actions between the parties in Saudi Arabia, Oman, Taiwan, China, Japan and Singapore. There are 183 opposition actions pending in 40 jurisdictions. The situation cries out for the negotiation of a global (but perhaps geographically differentiated) co-existence agreement of the kind I discussed in Omega Engineering Inc v Omega SA [2010] EWHC 1211 (Ch), [2010] FSR 26 at [33].

The Trade Mark was applied for on 22 October 2001 and registered on 9 December 2002. The specification of goods and services includes the following services in Classes 35, 36 and 42:

“Class 35

Accountancy services; forensic accountancy, including fraud determination and fraud research; internal and external auditing; book-keeping; tax research; tax preparation; administrative services and consults related thereto; consults related to secretarial services; business investigations; commercial business investigations and commercial business consults related to insolvent companies; incorporation of companies; providing commercial and commercial business information, whether or not on-line; costs analysis and consults related thereto; providing temporary management into an organization, so-called interim management; business management assistance and consults; market research, market studies and market analysis; business management and organization consultancy; commercial business consults for companies; consults in the field of business efficiency; consults in the field of marketing; consults related to mergers, acquisitions, franchising, company liquidation and sales of companies; consults in the field of commercial risk management and commercial process management; personnel management, selection and recruitment; seconding personnel; consults in the field of personnel; personnel dismissing counselling.

Class 36

Fiscal assessments; consults related to fiscal matters; consults related to credit checks and debtor checks; actuarial services and consults related thereto; financial and fiscal research; consults in the field of investments; consults in the field subsidies; consults in the field of (obtaining) financing and loans; consults in the field of company financing; consults in the field of financial matters and taxes; real estate appraisal; real estate management; consults in the field of insurance and risk management; pension services; management of pension funds; debt collection services; trust services; providing (whether or not on-line) information in the field of insurance, financial matters and fiscal matters.

Class 42

… arbitration and mediation …”

As indicated above, there are two distinct limbs to the Claimants’ infringement case. The first concerns the use by the Second to Fifth Defendants of the sign “BDO Remit” in relation to remittance services in the United Kingdom. Use has been made of that sign both in plain type and in the form of certain logos, but neither side suggested that the visual presentation of the logos made any difference to the assessment.

The second limb concerns the use by Unibank of the sign “BDO” in advertisements for investment banking and wealth management services in publications which circulate in the European Union. Again, use has been made of that sign both in plain type and in the form of certain logos, but neither side suggested that the visual presentation of the logos made any difference to the assessment.

The Claimants’ principal witnesses were Gervase MacGregor, Head of Advisory Services at BDO LLP and Simon Watson, International Head of Global Outsourcing at BDO LLP. As counsel for the Defendants pointed out, Mr MacGregor had little personal knowledge of the matters covered by his statement, and therefore it is to his exhibits that one must look for the relevant information. In addition the Claimants called Carole Wicks, the Switchboard Supervisor at BDO LLP’s London office. The Claimants also adduced witness statements from Carey Leonard, an experienced senior international banker, and Basile Dura, the Secretary of the Board of Stichting BDO, who were not required to attend for cross-examination.

The Defendants’ principal witnesses were Mary Ibuna, Unibank’s Vice President of Marketing and Communications Group, and Geneva Tan Gloria, Unibank’s First Vice President and Head of BDO Remittance Distribution. The Defendants also adduced witness statements from Thiruparan Thuraisingam of the Second Defendant (“CBN”), Mary Rodriguez-Torno of the Third Defendant (“MMT”), Arnel Gagalac of the Fourth Defendant (“Sunrise”) and Maximo Magdalena of the Fifth Defendant (“DMT”), who were not required to attend for cross-examination.

The governing entity of the BDO Network is BDO International Ltd (“BDO International”). BDO International was founded under a different name in 1963. In 1973 the European arm of the BDO Network changed its name to Binder Dijker Otte & Co and started using the acronym BDO. From 1980 all member firms also operated under the name Binder Dijker Otte & Co. In 1988 the member firms all adopted the BDO acronym as part of their names. This was one aspect of a move by the BDO Network to consistent global branding. Between 1 October 2009 and 1 January 2010 all member firms in 110 countries changed their name to just BDO.

The Third Claimant (“BDO LLP”) is the UK member of the BDO Network. BDO LLP is the sixth largest accountancy firm in the UK. The principal services it provides are accounting, audit and tax. Its main competitors are the so-called “big four” – Price Waterhouse Coopers, Deloitte, Ernst & Young and KPMG.

BDO LLP was originally called Stoy Hayward. It changed its name to BDO Stoy Hayward in 1994 when it became the UK member of BDO International. Shortly after Stoy Hayward joined the BDO Network, BDO Binder Hamlyn joined the UK association. In 2002 the firms became a single partnership under the name BDO Stoy Hayward with an associated but separate firm in Northern Ireland. On 1 October 2009 BDO Stoy Hayward changed its name to BDO LLP.

In addition to accounting, audit and tax services, BDO LLP offers complementary advisory and financial services in the following areas: business restructuring, corporate finance, forensic services, outsourcing, technology advisory services and sustainability and clean technology. It also offered investment management services until 2010, when it disposed of this part of the business to a private equity firm. Such services are still provided under the name BDO in Northern Ireland, however. In fields such as corporate finance, BDO LLP competes with merchant banks like Rothschild and Goldman Sachs.

BDO LLP uses the name BDO on its professional and marketing literature, its website and so on. Since 2005 it has had an annual marketing budget of, on average, nearly £26 million. It is required to comply with a strict style guide that applies to all of the members of the BDO Network. This includes use of the following logo and the corporate colours of red, white and blue.

Stichting BDO is a Dutch foundation which holds the intellectual property rights on behalf of the BDO Network, including the Trade Mark. BDO LLP is licensed to use the BDO name under a licence from the Second Claimant (“BDO IP”) dated January 2010. BDO IP is in turn licensed by Stichting BDO under an agreement also dated January 2010. Pursuant to these licence arrangements, all rights in the name and mark BDO belong to Stichting BDO.

Unibank was established in the Philippines in 1968 as Acme Savings Bank. In 1976 it became part of the SM Group of companies. It changed its name to Banco De Oro Savings and Mortgage Bank in 1977. It started as a savings and mortgage bank. In December 1994 it became a commercial bank (which can take deposits and provide loans), changing its name to Banco De Oro Commercial Bank. In September 1996 it became a universal bank (which is authorised to provide a wider range of financial services, including investments and asset management), changing its name to Banco De Oro Universal Bank. Since then it has established a number of subsidiaries to provide various kinds of services under names beginning with “BDO”, starting with BDO Forex, Inc in December 1996.

Unibank has grown both organically and through a series of acquisitions. In May 2007 it merged with Equitable PCI Bank under the name initially ofBanco De Oro-EPCI, Inc, and from July 2007 of Banco De Oro Unibank, Inc. The merger made it the second largest bank in the Philippines with 686 branches. After a further acquisition, it became the largest bank in the Philippines in the second half of 2008. It now has over 740 branches located across all regions of the Philippines. In 2011 its total assets were over 1 trillion pesos (about £15 billion). On 4 November 2011 (after the commencement of these proceedings) it changed its name to BDO Unibank, Inc.

Over the years, Unibank has used a number of different logos. From 1977 to 2003 it used the logo reproduced below, together with a blue, white and yellow/gold colour scheme (“oro” means gold in Spanish, one of the languages of the Philippines).

In 2003 Unibank adopted the following logo:

Following the merger with Equitable PCI in 2007, Unibank adopted the following logo:

From 1977 to 2003, and particularly from 1996 onwards, Unibank used the acronym BDO from time to time as well as its full name. In 2003 it started using the trading name BDO Unibank in conjunction with the name Banco De Oro, as can be seen from the logo reproduced in paragraph 17 above. Since the second half of 2007, its primary trading name has been simply BDO.

Since 2005, and particularly since 2007, Unibank has spent significant sums on marketing. In 2011 the figure was 2.172 billion pesos (approximately £3.38 million). It has won a number of awards within the banking industry, reflecting its reputation and success in the Philippines and throughout Asia.

Unibank got involved with remittance services in the late 1990s when it entered into distribution arrangements with Western Union and Uniteller, two well-known remittance companies. Under these arrangements, Unibank distributed the remitted monies in the Philippines on behalf of these remittance providers. It subsequently decided to set up its own remittance business, which was launched under the name BDO Remit in January 2004.

BDO Remit enables customers to transfer money to bank accounts held at BDO in the Philippines, to transfer money to a BDO branch in the Philippines for collection, and to transfer money to a BDO cash card. The BDO cash card is similar to a debit card, but does not require a bank account. Instead, cash is loaded remotely on to the card by the remitter, and the card is then used by the beneficiary in the Philippines.

Remittance services are particularly important to Filipinos due to the large numbers of them who work abroad precisely so that they can send money home. Overseas Filipino workers (known as OFWs) contribute over 10% of the Philippines’ GDP in the form of remittance payments alone. Unibank is the largest remittance provider in the Philippines by volume of transactions, with approximately 27% of the market share.

The Second to Fifth Defendants are independent of each other and, with the exception of the Second Defendant (“CBN”), of Unibank. CBN was independent until February 2011, when a Unibank subsidiary acquired a 60% stake. They all offer remittance services to the Philippines, including (but not limited to) remittance to bank accounts held by Unibank. Their customers are predominantly Filipinos, either OFWs or people who have now settled in the UK. The customers tend to make regular small transfers ranging from tens to thousands of pounds, sending money back to family in the Philippines. The typical fee for a transfer is about £4-8 depending on the amounts involved and the method of transfer.

The BDO Remit posters and other marketing materials that the Second to Fifth Defendants use are supplied to them by Unibank’s marketing representative in the UK. They all bear Unibank’s BDO logo and house colours (blue, white, gold). In a number of cases, they feature a famous Filipino singer and actor called Piolo Pascual, who endorses the BDO Remit brand. Frequently they have text in Filipino (Tagalog) as well as in English.

CBN. CBN was established in 1998 and has been providing remittance services in London since then. It is authorised by the FSA for the purposes of money remittance. The London branch is located just off Oxford Street. It is set up like a small bank or building society, with a row of tellers front of house and further staff in the back office. The signage above the entrance reads “CBN London Ltd” and displays the logo of CBN Grupo (CBN’s parent).

CBN has offered the BDO Remit service since some time in 2004. Originally it used Unibank to undertake the transfer of remittance monies on its behalf in the Philippines, although now that is undertaken by another entity called Pircus Corporation. It displays the BDO Remit sign and various items of related BDO Remit marketing around the branch to inform customers that it offers this service.

MMT. MMT was established as a remittance business in 2006. It shares premises with a travel agency called Crystal Travel on the Hogarth Road in Earls Court. Earls Court has a significant Filipino community and there are a number of Filipino shops/establishments in the area. Both MMT and Crystal Travel run businesses aimed at Filipinos. MMT has been offering the BDO Remit service since 2007.

The exterior of the premises carries signs for both MMT and Crystal Travel. Inside, MMT’s business is located on the ground floor (with a small meeting room downstairs) and Crystal Travel is located upstairs. MMT displays leaflets and posters to inform customers of the remittance services that it offers, including BDO Remit and M LHuillier (a money transfer service similar to Western Union which does not involve a bank).

Sunrise. Sunrise was established in 2004. It is registered with the FSA for money transfer services. Since 2007 the business has traded from premises on Kenway Road in Earls Court. It comprises a Filipino café downstairs (called the Sunrise Café) and the remittance business upstairs. The signage above the shop front reads “Sunrise Café & Restaurant”. The remittance service is accessed via some stairs located inside the café. Sunrise has a second, smaller branch in Kilburn which was opened in 2010, but this branch does not have a café.

Sunrise has tie-ups with three Filipino banks, including Unibank, so that it can offer transfer services to accounts held at a number of different banks. It has offered the BDO Remit service since 2007. To inform customers of this service, BDO Remit marketing materials can be found inside the café and sometimes a BDO Remit sign is placed on the pavement outside.

DMT. DMT was established in 2004 as a remittance provider. DMT’s business is located within a Filipino supermarket called Pinoy Supermarket (a separate legal entity), which is on the Hogarth Road in Earls Court. The remittance counter can be found downstairs at the back of the supermarket.

DMT has provided the BDO Remit service since April 2006. There are some BDO Remit posters upstairs by the stairwell and downstairs by the remittance counter; BDO Remit leaflets are also found on the counter. Other remittance services are also advertised, such as Western Union.

Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) (“the Regulation”) includes the following provisions:

“Article 4

Signs of which a Community trade mark may consist

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings

Article 7

Absolute grounds for refusal

1.

The following shall not be registered:

(a)

signs which do not conform to the requirements of Article 4;

…

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.

2.

The following, inter alia, may be prohibited under paragraph 1:

…

(d)

using the sign on business papers and in advertising.

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.

Article 15

Use of Community trade marks

1.

If, within a period of five years following registration, theproprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first subparagraph:

(a)

use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

(b)

affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes.

2.

Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.

Article 51

Grounds for revocation

1.

The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a)

if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor's rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;

…

2.

Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.

Article 52

Absolute grounds for invalidity

1.

A Community trade mark shall be declared invalid in application to the Office or on the basis of a counterclaim in infringement proceedings:

(a)

where the Community trade mark has been registered contrary to the provisions of Article 7;

…

Article 55

Consequences of revocation and invalidity

1.

The Community trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties.

…

Article 100

Counterclaims

1.

A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation.

…

Article 101

Applicable law

…

3.

Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.”

Articles 4, 7(1)(a), 9(1)(a)-(c),2(d), 12(a), 15 and 51(1)(a),(2) correspond to Articles 2, 3(1)(a), 5(1),(2),(3)(d), 6(1)(a), 10(1),(2), 12(1) and 13 of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (“the Directive”) and to sections 1(1), 10(1),(2),(3),(4)(d), 11(2)(a) and 46(1)(a),(3) of the Trade Marks Act 1994.

I reviewed the correct approach to the construction of the specification of goods and/or services of a registered trade mark in Omega Engineering Inc v Omega SA [2012] EWHC 3440 (Ch) at [21]-[33]. In short, the words used in the specification should be given their natural and usual meaning. They should neither be given such a broad interpretation that the limits of the specification become fuzzy, nor strained to produce a narrow meaning.

As Jacob J pointed out in Avnet Inc v Isoact Ltd [1998] FSR 16 at 19, specifications of services can pose particular problems of interpretation:

“… definitions of services, which I think cover six of the classifications in the respect of which trade marks can be registered, are inherently less precise than specifications of goods. The latter can be, and generally are, rather precise, such as ‘boots and shoes’.

In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”

On this basis, he held that the internet service provided by the defendant did not constitute “advertising and promotional services”.

The Defendants abandoned their counterclaim for a declaration of invalidity after the trial and after I had drafted the following section of this judgment. In the circumstances I shall explain why I consider that the Defendants were right to abandon the point.

The Defendants contended that the Trade Mark is partially invalid because some of the services for which it is registered are not identified with sufficient clarity and precision, and therefore the Trade Mark does not, to that extent, comply with the requirements of Article 4 of the Directive.

The Claimants contended that lack of clarity of the specification of goods or services is not a ground upon which a Community trade mark may be declared invalid (or partially invalid). In the alternative, the Claimants disputed that the relevant parts of the specification are lacking in the requisite clarity and precision.

The Defendants’ case was based upon the judgment of the Court of Justice of the European Union in Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks [2012] ECR I-0000, [2012] ETMR 42, in which the Court ruled that:

“[The Directive] must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.”

Although the ruling concerns the interpretation of the Directive, it is clear that the Regulation must be interpreted in the same way.

It follows that the applicant for a Community trade mark must specify the goods and/or services in respect of which registration is sought with sufficient clarity and precision. If the applicant fails to do so, the Office for Harmonisation in the International Market – Trade Marks and Designs (“OHIM”) should refuse to allow the application to proceed to registration without the specification being amended to make it sufficiently clear and precise. It does not follow that, if the applicant fails to do so and OHIM fails to ensure that the applicant rectifies the lack of clarity during the course of examination of the application, the trade mark can be declared invalid on that ground after registration.

Article 100(1) of the Regulation provides that a declaration of invalidity may only be based on the grounds of invalidity mentioned in the Regulation. The only ground of invalidity relied by the Defendants is Article 52(1)(a) in conjunction with Article 7(1)(a). This provides that signs which do not conform to the requirements of Article 4 shall not be registered.

In my judgment it is clear that lack of clarity and precision in the specification of goods and services is not a ground of invalidity. Articles 4 and 7(1)(a) are concerned with the signs of which a Community trade mark may consist. As I discussed in J.W. Spear & Sons Ltd v Zynga Inc [2012] EWHC 3345 (Ch) at [10]-[27], the case law of the Court of Justice of the European Union establishes that, in order to comply with Article 4, the subject matter of an application or registration must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The CJEU explained the third condition in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619 as follows:

“80.

As a preliminary point, it is appropriate to observe, first, that the purpose of Article 2 of the Directive is to define the types of signs of which a trade mark may consist (Case C-273/00 Sieckmann [2002] ECR I-11737, paragraph 43), irrespective of the goods or services for which protection might be sought (see to that effect Sieckmann, paragraphs 43 to 55, Libertel, paragraphs 22 to 42, and Case C-283/01 Shield Mark [2003] ECR I-0000, paragraphs 34 to 41). It provides that a trade mark may consist inter alia of ‘words’ and ‘letters’, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

81.

In view of that provision, there is no reason to find that a word like ‘Postkantoor’ is not, in respect of certain goods or services, capable of fulfilling the essential function of a trade mark, which is to guarantee the identity of the origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see, in particular, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28, Merz & Krell, paragraph 22, and Libertel, paragraph 62). Accordingly, an interpretation of Article 2 of the Directive appears not to be useful for the purposes of deciding the present case.”

The Court went on to say that the question whether POSTKANTOOR (Dutch for POST OFFICE) was precluded from registration in respect of particular goods and services (i.e. those provided by a post office) because it was devoid of distinctive character and/or descriptive in relation to those particular goods and services fell to be assessed under Article 3(1)(b) and (c) of the Directive (Article 7(1)(b) and (c) of the Regulation).

It follows that “the goods or services” referred to in Article 4 are not the particular goods or services listed in the specification, as counsel for the Defendants argued. Rather, the question under Article 4 is whether the sign is capable of distinguishing any goods or services.

It is not surprising that clarity of the specification of goods and services should be an issue during examination, but not a ground of invalidity after grant, since the same rule applies in the case of patent claims: see Articles 84, 100 and 138 of the European Patent Convention and sections 14(5)(b) and 72(1) of the Patents Act 1977.

As counsel for the Claimants accepted, if the specification of goods or services is amended after grant, in particular as a result of partial revocation for non-use, then it is incumbent on the competent authority to ensure that the amended specification is clear and precise, just as when patent claims are amended.

The Defendants contend that the Trade Mark should be partially revoked for want of genuine use in the Community for a continuous period of five years. As counsel for the Defendants made clear, the Defendants only seek to counterclaim for revocation of the Trade Mark as a way of narrowing the list of services relied upon by the Claimants for the purposes of their claims for infringement under Article 9(1)(b) and (c) of the Regulation. During the course of the trial the Claimants reduced the list of services they relied on, and so the Defendants correspondingly reduced the scope of their attack.

Genuine use. In SANT AMBROEUSTrade Mark [2010] RPC 28 at [42] Anna Carboni sitting as the Appointed Person set out the following helpful summary of the jurisprudence of the CJEU in Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439, Case C-259/02 La Mer Technology Inc v Laboratories Goemar SA [2004] ECR I-1159 and Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-2759 (to which I have added references to Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237):

“(1)

Genuine use means actual use of the mark by the proprietor or a third party with authority to use the mark: Ansul, [35] and [37].

(2)

The use must be more than merely ‘token’, which means in this context that it must not serve solely to preserve the rights conferred by the registration: Ansul, [36].

(3)

The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin: Ansul, [36]; Sunrider, [70]; Silberquelle, [17].

(4)

The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, i.e. exploitation that is aimed at maintaining or creating an outlet for the goods or services or a share in that market: Ansul, [37]-[38]; Silberquelle, [18].

(a)

Example that meets this criterion: preparations to put goods or services on the market, such as advertising campaigns: Ansul, [37].

(b)

Examples that do not meet this criterion: (i) internal use by the proprietor: Ansul, [37]; (ii) the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle, [20]-[21].

(3)

All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including in particular, the nature of the goods or services at issue, the characteristics of the market concerned, the scale and frequency of use of the mark, whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them, and the evidence that the proprietor is able to provide: Ansul, [38] and [39]; La Mer, [22]-[23]; Sunrider, [70]-[71].

(4)

Use of the mark need not always be quantitatively significant for it to be deemed genuine. There is no de minimis rule. Even minimal use may qualify as genuine use if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor: Ansul, [39]; La Mer, [21], [24] and [25]; Sunrider, [72]”

In Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV [2012] ECR I-0000, [2013] ETMR 16 the CJEU ruled that Article 15(1) of the Regulation must be interpreted as meaning that the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to “genuine use in the Community”, but that the territorial extent of the use was one of the relevant factors in that assessment.

Partial revocation: substantive aspects. It is often the case that the trade mark proprietor has made genuine use of the trade mark in relation to some goods or services covered by the specification, but not others. In these circumstances Article 51(2) of the Regulation (corresponding to Article 13 of the Directive) requires the competent authority only to revoke the trade mark to the extent that it has not been genuinely used. This can lead to difficulties where the trade mark is registered in respect of a broad class of goods or services, but the proprietor has only established use of a narrower sub-class within that broad class.

As the Court of First Instance (now the General Court) held in Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM (ALADIN) [2005] ECR II-2861:

“45.

It follows from the provisions cited above that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

46.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.”

In NIRVANA Trade Mark (BL O/262/06), when sitting as the Appointed Person, I reviewed the decisions of the English courts in MINERVA Trade Mark [2000] FSR 734, Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 17, DaimlerChrysler AG v Alavi [2001] RPC 42, Thomson Holidays Ltd v Norwegian Cruise Lines Ltd [2002] EWCA Civ 1828, [2003] RPC 32, West v Fuller Smith & Turner plc [2003] EWCA Civ 48, [2003] FSR 44, Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322, [2003] FSR 51 and ANIMAL Trade Mark [2003] EWHC 1589, [2004] FSR 19. I concluded at [57] that these were broadly consistent with ALADIN, but that to the extent there was a difference I was bounded by the English authorities. I went on:

“58.

I derive the following propositions from the case law reviewed above:

(1)

The tribunal’s first task is to find as a fact what goods or services there has been genuine use of the trade mark in relation to during the relevant period: Decon v Fred Baker at [24]; Thomson v Norwegian at [30].

(2)

Next the tribunal must arrive at a fair specification having regard to the use made: Decon v Fred Baker at [23]; Thomson v Norwegian at [31].

(3)

In arriving at a fair specification, the tribunal is not constrained by the existing wording of the specification of goods or services, and in particular is not constrained to adopt a blue-pencil approach to that wording: MINERVA at 738; Decon v Fred Baker at [21]; Thomson v Norwegian at [29].

(4)

In arriving at a fair specification, the tribunal should strike a balance between the respective interests of the proprietor, other traders and the public having regard to the protection afforded by a registered trade mark: Decon v Fred Baker at [24]; Thomson v Norwegian at [29]; ANIMAL at [20].

(5)

In order to decide what is a fair specification, the tribunal should inform itself about the relevant trade and then decide how the average consumer would fairly describe the goods or services in relation to which the trade mark has been used: Thomson v Norwegian at [31]; West v Fuller at [53].

(6)

In deciding what is a fair description, the average consumer must be taken to know the purpose of the description: ANIMAL at [20].

(7)

What is a fair description will depend on the nature of the goods, the circumstances of the trade and the breadth of use proved: West v Fuller at [58]; ANIMAL at [20].

(8)

The exercise of framing a fair specification is a value judgment: ANIMAL at [20].

59.

I would add a point which in my judgment is implicit in most of the decisions, although not explicit, which is that it is for the tribunal to frame a fair specification and not the parties. This is not to say, however, that the tribunal is either obliged or entitled to ignore considerations of procedural justice and efficiency: see the observations of Advocate General Sharpston in Case C-239/05 BVBA Management, Training en Consultancy v Benelux-Merkenbureau [2006] ECR I-1458 at [62]-[68]. …”

In EXTREME Trade Mark [2008] RPC 2, again sitting as the Appointed Person, I considered the decision of the CFI in Case T-256/04 Mundipharma AG v OHIM [2007] ECR II-449 and continued as follows:

“54

Although at first blush this suggests an approach which is somewhat different to that laid down by the English authorities considered in NIRVANA, I consider that the difference is smaller than might appear. The essence of the domestic approach is to consider how the average consumer would fairly describe the goods in relation to which the trade mark has been used. Likewise, paragraph [29] of Mundipharma indicates that the matter is to be approached from the consumer's perspective.

55

To the extent that there is a difference between them, I remain of the view expressed in NIRVANA that I am bound by the English authorities interpreting section 46(5) of the 1994 Act and Article 13 of the Directive and not by the CFI's interpretation of Article 46(2) of the CTM Regulation since, as already noted above, there are differences between the two legislative contexts. Nevertheless I consider that English tribunals should endeavour to follow the latter so far as it is open to them to do so. Mundipharma suggests that, within the spectrum of domestic case law, the slightly more generous approach of Jacob J. in ANIMAL Trade Mark [2003] EWHC 1589 (Ch), [2004] FSR 19 is to be preferred to the slightly less generous approach of Pumfrey J. in DaimlerChrysler AG v Alavi [2001] RPC 42.”

In Daimler AG v Sany Group Co Ltd [2009] EWHC 1003 (Ch), [2009] ETMR 58 Geoffrey Hobbs QC sitting as a Deputy High Court Judge summarised the correct approach at [10] as follows:

“… the aim should be to arrive at a fair specification by identifying and defining not the particular examples of goods for which there has been genuine use, but the particular categories of goods they should realistically be taken to exemplify. …”

As Mr Hobbs added when sitting as the Appointed Person in Euro Gida Sanayi Ve Ticaret Ltd v Gima (UK) Ltd (BL O/345/10) at 11:

“For that purpose the terminology of the resulting specification should accord with the perceptions of the average consumer of the goods or services concerned.”

Partial revocation: procedural aspects. Article 101(3) of the Regulation provides that (unless otherwise provided) a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in question. It follows that this Court must apply the rules of procedure which would govern a claim for revocation for non-use of a UK registered trade mark under the 1994 Act. Section 100 of the 1994 Act provides that “if any question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it”.

A common procedural problem with claims for revocation for non-use is that the applicant for revocation starts by contending that there has been no use in relation to any of the specified goods or services, while the proprietor starts by contending that there has been use in relation to all such goods or services. Only at a later stage do the parties accept that there has been use in relation to some of the goods and services, but not others, and start addressing their minds to what would be a fair specification in the light of the use that has been established. This can cause particular difficulty when the real issue only emerges on appeal. The same problem can arise in the context of opposition proceedings where the opponent is required to prove use of an earlier registration it relies on.

There is now a considerable body of case law on this question, of which the leading instances are CITYBOND Trade Mark [2007] RPC 13, Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch), [2011] RPC 15 and Advanced Perimeter Systems Ltd v Keycorp Ltd [2012] RPC 14 and 15.

As the cases make clear, it is incumbent on the tribunal to adopt a procedure which is both fair and efficient and it is incumbent on the parties to conduct themselves accordingly. In contested first instance inter partes proceedings, this will generally mean that the proceedings should either be conducted on the basis that the parties advance their contentions as to what would constitute a fair specification at the hearing, so as to enable the tribunal to issue a final decision, or on the basis that the tribunal makes its findings of fact as to the extent of use first in an interim decision and then invites submissions as to what would constitute a fair specification before issuing a final decision. The current practice of the Trade Marks Registry with regard to both opposition proceedings and invalidity proceedings set out in Tribunal Practice Notice 1/2012 reflects this.

Procedure. Before considering the merits of the Defendants’ claim, I must address a procedural objection raised by counsel for the Claimants in his closing submissions.

In this case the position of the parties prior to trial was as follows. In their Counterclaim the Defendants alleged non-use of the Trade Mark in relation to all services other than accountancy, audit and tax services. In their Defence to Counterclaim the Claimants alleged use of the Trade Mark, and relied upon Annex 1 which contained particulars of a series of example case studies. Following exchange of witness statements, the Defendants amended their Counterclaim to narrow the non-use attack to the categories of services listed in Annex 9. The Claimants thereupon amended their Defence to Counterclaim to allege use of the Trade Mark in relation to the services listed in Annex 9 to the Amended Counterclaim, and relied upon an amended Annex 1.

Although these amendments narrowed the issue somewhat, it remained the case that, in relation to each category of services listed in Annex 9 to the Amended Counterclaim, the Defendants’ case was a blanket allegation of non-use while the Claimants’ case was a blanket allegation of use. As I observed during counsel’s opening submissions, neither side had advanced, even by way of fall-back position, any case as to a narrower fair specification within those categories.

At the conclusion of the evidence, counsel for the Defendants stated that he would give counsel for the Claimants notice of any fall-back position relied on by the Defendants in advance of the parties exchanging written closing submissions. This he duly did. As discussed in more detail below, the Defendants’ primary case remains that certain categories of service should be deleted, but in the alternative the Defendants now contend that those categories should be restricted to narrower sub-categories. For their part, the Claimants responded by putting forward their own fall-back position. (In addition, the Claimants indicated that they were no longer relying upon certain services as part of their Article 9(1)(c) infringement case, whereupon the Defendants dropped their non-use attack in relation to those services.)

Counsel for the Claimants submitted that the Defendants should not be permitted to advance their alternative case because it had not been pleaded or even mentioned in the Defendants’ skeleton argument for trial. Counsel for the Claimants argued that in those circumstances it would be unfair for the Defendants to be allowed to advance their alternative case since that would deprive the Claimants of the opportunity to serve additional evidence to address that case.

I do not accept this argument, for two reasons. First, it is clear from the Claimants’ evidence that the Claimants attempted to prove use of the Trade Mark across the breadth of each of the categories in issue. The Claimants did not content themselves with adducing evidence of a single sub-category within each category. The reason for this is obvious. The Claimants were being represented by specialist solicitors and counsel. It may therefore be inferred that the Claimants were aware that it might well not be sufficient merely to prove use of a single sub-category within a broad category. Secondly, I consider that the Defendants were justified in not formulating their fall-back position until they had had the opportunity to test the Claimants’ evidence of use in cross-examination. Once the Defendants had had that opportunity, they formulated their fall-back position promptly, which enabled the Claimants to address it in closing submissions.

Relevant period. The Defendants contend that there has been no genuine use of the Trade Mark in relation to the services which remain under attack since the date on which the registration procedure was completed. Accordingly, the Defendants seek revocation under Articles 15(1) and 51(1)(a) of the Regulation with effect from 10 December 2007 (five years after completion of the registration procedure). The Claimants have defended the counterclaim, as they are entitled to do, on the basis that they can demonstrate use in the five years preceding the date of the counterclaim, that is to say, 4 October 2006 to 3 October 2011. There is no suggestion that the Claimants’ use in the period 10 December 2002 to 3 October 2006 was more extensive than their use in the period 4 October 2006 to 3 October 2011.

Territorial extent of the use. The Claimants rely upon use both by BDO LLP and by other European members of the BDO Network licensed by Stichting BDO, although for convenience I shall just refer to the users as “the Claimants”. There is no issue arising out of the territorial extent of the use.

Administrative services and consults related thereto (Class 35). Before turning to consider the evidence of use, it is necessary to construe this part of the specification. Counsel for the Defendants submitted that these services should be limited to the services of company administrators in the technical insolvency sense. I am unable to accept that submission, since I do not regard that as the natural and usual meaning of the words. In my view this is a very broad category even if one concentrates on the core meaning of the phrase. It covers the provision of services concerning the administration of any aspect of a business or other organisation, and consultation in relation to the provision of such services.

The Defendants contend that this category should be either deleted altogether or restricted to “payroll services”. In support of this contention the Defendants argue that “payroll services” are the only services in relation to which the Trade Mark has been used which might fall within this category and not within other categories of service in respect of which the Trade Mark is registered.

The Claimants contend that this category should either be maintained in full or restricted to “administrative services in the fields of audit, accounting, tax, outsourcing and advisory services and consults related thereto”. In support of this contention the Claimants argue that the evidence establishes use of the Trade Mark in relation to the following services:

Part of what divides the parties is the relevance of other categories of services for which the Trade Mark is registered. In essence, the Defendants say that if the Trade Mark has been used in relation to another specific category of service it should not count towards maintenance of this broad category, whereas the Claimants say that it should. In my view the answer depends, first, on whether the other category forms a subset of the category in issue; and secondly, on whether, if it does, it can realistically be taken to exemplify the broader category.

I accept that the Trade Mark has been used in relation to the services listed in paragraph 73 above and that, with one exception, they are sub-categories of administrative services. I do not consider that “provision of interim staffing services” is a sub-category of administrative services, but rather of one or more of “providing temporary management into an organisation”, “personnel management, selection and recruitment”, “seconding personnel” and “consults in the field of personnel”.

In these circumstances deletion of the entire category is not justified. On the other hand, I do not think that these services can realistically be taken to exemplify the broad category. Administrative services may be provided in areas quite remote from these services, for example the administration of many kinds of local government services. In my judgment a fair specification to reflect the use established is “administrative services in the accounting, financial, insolvency and tax fields and consults related thereto”.

Consults related to secretarial services (Class 35). It is common ground that the Claimants have used the Trade Mark in relation to company secretarial services. The Claimants contend that it has been used in relation to secretarial services more widely, but the Defendants dispute this. In my view the evidence does not establish use in relation to secretarial services as that expression would normally be understood. I have some doubts as to whether company secretarial services are covered by this category, but since this is not contested I shall put those on one side. Accordingly, I agree with the Defendants that a fair specification is “consults related to company secretarial services”. That is also the Claimants’ fall-back position.

Consults in the field of commercial risk management and commercial process management (Class 35). The Claimants contend that the Trade Mark has been used in relation to these services, but the Defendants dispute this. I agree with the Defendants that the two case studies relied on by the Claimants do not demonstrate use in relation to these services, but subject to one minor point I consider that the marketing materials relied on by the Claimants do show such use. The minor point is that I consider that they show use in relation to “project management” and not “process management”.

Consults related to fiscal matters/consults in the field of financial matters and taxes (Class 36). The Defendants do not attack the registration in so far as it covers “consults in the field of … taxes”. Slightly to my surprise, it was common ground between counsel that there was no real difference in meaning between “fiscal matters” and “financial matters”. Given that “consults in the field of … taxes” is not in issue, I am content to proceed on that basis. Even so, the question remains as to what is meant by “consults in the field of financial matters”. In my view this is a somewhat vague, and very broad, category. It covers consultancy services in relation to any kind of financial matters.

The Defendants contend that these categories should either be deleted altogether or restricted to “financial modelling services provided to businesses”. In support of this contention the Defendants argue that “financial modelling services provided to businesses” are the only services in relation to which the Trade Mark has been used which might fall within these categories and not within other categories of services in respect of which the Trade Mark is registered. The other categories of services upon which the Defendants particularly rely are “consults relating to mergers, acquisitions … and sales of companies” (Class 35), “consults in the field of investments”, “consults in the field of (obtaining) financing and loans” and “consults in the field of company financing” (all Class 36). Even financial modelling services, the Defendants suggest, would fall better within “commercial business investigations …” or “market research, market studies and market analysis” (both Class 35).

Consistently with these contentions, the Defendants do not dispute that the Claimants have demonstrated use in relation to the following: mergers and acquisitions; due diligence for business acquisitions, investments and loans; raising finance (including by means of IPOs and other kinds of share issues); and financial modelling. I would add to this providing advice on corporate structures and restructuring outside the insolvency context.

I consider that all of these sub-categories are within the broad category of “consults in the field of financial matters”, but I do not think they can realistically be taken to exemplify the broad category. As counsel for the Defendants submitted, the broad category covers a wide range of different sub-categories such as credit checks, price comparisons and valuations. I note that, apart from services relating to tax, Mr MacGregor’s evidence was mainly directed to the activities of the Claimants’ “Corporate Finance” team. Having regard to that, I conclude that a fair specification to reflect the use established is “consults in the field of corporate finance”.

Consults in the field [of] subsidies (Class 36). The Claimants contend that the Trade Mark has been used in relation to these services, but the Defendants dispute this. I agree with the Defendants that the three case studies relied on by the Claimants do not demonstrate use in relation to these services, but rather use in relation to tax advice and representation. On the other hand, I consider that the marketing materials and some of the contractual documents relied on by the Claimants do show use in relation to these services. Thus the attack on this category fails.

Real estate appraisal (Class 36). The Defendants accept that the Claimants’ evidence shows some very limited use of the Trade Mark in relation to real estate appraisal, but question whether the scale of use established is sufficient to amount to genuine use in the Community. In my judgment it just suffices for this purpose.

Consults in the field of insurance and risk management (Class 36). The Defendants do not attack the registration in so far as it covers “consults in the field of insurance”. As for “consults in the field of … risk management”, the Defendants accept that this stands or falls with “consults in the field of commercial risk management” which I have considered above.

Debt collection services (Class 36). The Claimants rely upon evidence that they have used the Trade Mark in relation to insolvency work, and that such work includes collecting debts. The Defendants do not dispute those facts, but dispute that they establish use in relation to “debt collection services” as that expression would be understood by the average consumer. In support of this, the Defendants rely upon the fact that the Claimants are not even members of the Credit Service Association, the body that regulates debt collection. In addition, Mr MacGregor accepted that debt collection was a different industry with which the Claimants did not compete. I agree with the Defendants on this issue, and accordingly this category must be revoked.

Arbitration and mediation (Class 42). The Claimants contend that they have used the Trade Mark in relation to this category of services in two ways. The first is by providing expert witnesses for arbitrations and mediations. In my judgment that does not amount to providing arbitration or mediation services (it amounts to providing expert witness services). Secondly, however, the Claimants provide mediators. It follows that this category should be restricted to “mediation”.

Conclusion. Accordingly, the counterclaim succeeds to the extent that the specification of services will be limited with effect from 10 December 2007 as follows: “administrative services and consults related thereto” will be limited to “administrative services in the accounting, financial, insolvency and tax fields and consults related thereto”; “consults related to secretarial services” will be limited to “consults related to company secretarial services”; “consults in the field of commercial risk management and commercial process management” will be limited to “consults in the field of commercial risk management and commercial project management”; “consults related to fiscal matters” and “consults in the field of financial matters and taxes” will be limited to “consults in the fields of corporate finance and taxes”; “debt collection services” will be deleted; and “arbitration and mediation” will be limited to “mediation”.

The Trade Mark was registered on 9 December 2002 and I have decided that it should be partially revoked with effect from 10 December 2007. The Claimants’ infringement claims concern acts performed both before and after 10 December 2007. It is therefore important to be clear as to the relevant dates at which the infringement claims fall to be assessed.

In Case C-145/05 Levi Strauss & Co v Casucci SpA [2006] ECR I-3703 Levi Strauss relied upon the highly distinctive character of its trade mark as supporting the existence of a likelihood of confusion under Article 5(1)(b) of the Directive, but the Cour d’appel de Bruxelles (Brussels Court of Appeal) held that the trade mark could no longer be considered highly distinctive since it was made up of components which were now common to the trade. In those circumstances the Belgian Cour de Cassation referred four questions to the Court of Justice of the European Union concerning the relevant date of assessment.

The first two questions asked whether, in order to determine the scope of protection of the trade mark, the court should assess the perception of the public at the time when use of the allegedly infringing use was commenced or at a later time. The Court of Justice answered these questions as follows:

“17.

The proprietor’s right to protection of his mark from infringement is neither genuine nor effective if account may not be taken of the perception of the public concerned at the time when the sign, the use of which infringes the mark in question, began to be used.

18.

If the likelihood of confusion were assessed at a time after the sign in question began to be used, the user of that sign might take undue advantage of his own unlawful behaviour by alleging that the product had become less renowned, a matter for which he himself was responsible or to which he himself contributed.

19.

Article 12(2)(a) of Directive 89/104 provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. Thus, by balancing the interests of the proprietor against those of his competitors in the availability of signs, the legislator considered, in adopting this provision, that the loss of that mark’s distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. Therefore, as long as this is not the case, and particularly when the loss of the distinctive character is linked to the activity of a third party using a sign which infringes the mark, the proprietor must continue to enjoy protection.

20.

In the light of all the foregoing, the answer to the first and second questions must be that Article 5(1) of Directive 89/104 must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.”

The third question was whether, as a general rule, an order for cessation of use of the sign should be made where it had been found that the use of the sign constituted an infringement of the trade mark at the time when that use commenced. The Court of Justice answered this question as follows:

“Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor’s rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease use of that sign.”

The fourth question was whether it was appropriate to order cessation of the use of the sign if the trade mark had lost its distinctive character due to an act or omission of the trade mark proprietor after the sign had begun to be used. The Court of Justice answered this question as follows:

“33.

… where a trade mark has lost its distinctive character in consequence of acts or inactivity of the proprietor so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, its proprietor can no longer assert the rights conferred on him under Article 5 of that directive.

…

36.

Accordingly, after revocation in the particular case has been established, the competent national court cannot order cessation of the use of the sign in question, even if, at the time when that sign began to be used, there was a likelihood of confusion between the sign and the mark concerned.

37.

Consequently, the answer to the fourth question must be that it is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104 and the trade mark has therefore been revoked.”

This leaves open a number of points. First, neither that case nor any subsequent case has considered the relevant date where there are different types of use of the sign each giving rise to different issues on likelihood of confusion (e.g. because they are used in a quite different context). Counsel for the Defendants submitted that Levi Strauss should be read in the light of the CJEU’s subsequent decision in Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2008] ECR I-4231, which requires a contextual assessment of the use of the sign, to mean that likelihood of confusion was to be judged at the date the sign in question began to be used in the particular manner and context complained of. If the defendant used the sign in a materially different manner or context at a later date, a new global assessment had to be made as of that date. I accept that submission.

Secondly, Levi Strauss is only concerned with assessing the scope of protection of a mark, and specifically the effect of any acquired reputation on the likelihood of confusion. It does not address other aspects of infringement or defences such as the own name defence under Article 12(a) of the Regulation. As counsel for the Defendants submitted, these may be date sensitive. For example, the honest practices proviso to the own name defence may mean that the defence is available as at some dates but not others: see Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch), [2012] FSR 7 at [130]-[144].

Thirdly, Levi Strauss does not consider the position where the defendant has been using the sign alleged to be infringed for a long period before the issue of proceedings. Counsel for the Defendants pointed out that in passing off cases there may come a point where the court concludes that there is no longer any deception, so no relief (save for past damages) will be granted: see e.g. DaimlerChrysler AG v Alavi [2001] RPC 42 at [67]. He submitted that in principle the same approach should be applied in a trade mark case. For reasons that will appear, I do not consider that it is necessary to decide whether or not this is correct.

Turning to the infringement allegations in the present case, counsel for the Defendants submitted that the correct approach was as follows:

I accept these submissions, subject to one small qualification. The qualification is that infringements prior to 17 May 2005 (six years before the Claim Form was issued) are barred by limitation in any event.

The Claimants contend that Unibank’s advertisements containing the sign BDO infringe under Article 9(1)(a) of the Regulation.

The case law of the CJEU establishes that the proprietor of a Community trade mark can only succeed in a claim under Article 9(1)(a) of the Regulation if six conditions are satisfied: (i) there must be use of a sign by a third party within the European Union; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect or be liable to affect the functions of the trade mark: see in particular Case C-206/01 Arsenal Football plc v Reed [2002] ECR I-10273 at [51], Case C-245/02 Anheuser-Busch Inc v Budejovicky Budvar np [2004] I-10989 at [59], Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-1017 at [18]-[22] and Case C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 at [16].

The first condition. The correct approach to the question of whether there has been use of the sign within the European Union was considered by the CJEU in the context of offers for sale on an online marketplace in Case C-324/09 L’Oréal SA v eBay International AG [2011] ECR I-0000, [2012] EMLR 6. In that case the Court held as follows:

“61.

Whilst recognising those principles, eBay submits that the proprietor of a trade mark registered in a Member State or of a Community trade mark cannot properly rely on the exclusive right conferred by that trade mark as long as the goods bearing it and offered for sale on an online marketplace are located in a third State and will not necessarily be forwarded to the territory covered by the trade mark in question. L’Oréal, the United Kingdom Government, the Italian, Polish and Portuguese Governments, and the European Commission contend, however, that the rules of Directive 89/104 and Regulation No 40/94 apply as soon as it is clear that the offer for sale of a trade-marked product located in a third State is targeted at consumers in the territory covered by the trade mark.

62.

The latter contention must be accepted. If it were otherwise, operators which use electronic commerce by offering for sale, on an online market place targeted at consumers within the EU, trade-marked goods located in a third State, which it is possible to view on the screen and to order via that marketplace, would, so far as offers for sale of that type are concerned, have no obligation to comply with the EU intellectual property rules. Such a situation would have an impact on the effectiveness (effet utile) of those rules.

63.

It is sufficient to state in that regard that, under Article 5(3)(b) and (d) of Directive 89/104 and Article 9(2)(b) and (d) of Regulation No 40/94, the use by third parties of signs identical with or similar to trade marks which proprietors of those marks may prevent includes the use of such signs in offers for sale and advertising. As the Advocate General observed at point 127 of his Opinion and as the Commission pointed out in its written observations, the effectiveness of those rules would be undermined if they were not to apply to the use, in an internet offer for sale or advertisement targeted at consumers within the EU, of a sign identical with or similar to a trade mark registered in the EU merely because the third party behind that offer or advertisement is established in a third State, because the server of the internet site used by the third party is located in such a State or because the product that is the subject of the offer or the advertisement is located in a third State.

64.

It must, however, be made clear that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory (see, by analogy, Joined Cases C-585/08 and C-144/09 Pammer and Hotel Alpenhof [2010] ECR I-0000, paragraph 69). Indeed, if the fact that an online marketplace is accessible from that territory were sufficient for the advertisements displayed there to be within the scope of Directive 89/104 and Regulation No 40/94, websites and advertisements which, although obviously targeted solely at consumers in third States, are nevertheless technically accessible from EU territory would wrongly be subject to EU law.

65.

It therefore falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory. When the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product, that type of detail is of particular importance in the said assessment.”

Joined Cases C-585/08 and C-144/09 Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller [2010] ECR I-12527, to which reference is made at [64], concerned the interpretation of Article 15(1)(c) of Council Regulation 44/2001/EC of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“the Brussels I Regulation”), and in particular the requirement that “the contract has been concluded with a person who pursues commercial or professional activities in the member state of the consumer’s domicile or, by any means, directs such activities to that member state”. The CJEU interpreted the national court as asking, in essence, “on the basis of what criteria a trader whose activity is presented on its website or on that of an intermediary can be considered to be ‘directing’ its activity to the Member State of the consumer’s domicile …, and second, whether the fact that those sites can be consulted on the internet is sufficient for that activity to be regarded as such”.

The Court held at [69]-[75] that it was not sufficient for this purpose that a website was accessible in Member States other than that in which the trader concerned was established: “the trader must have manifested its intention to establish commercial relations with consumers from one or more other Member States, including that of the consumer’s domicile”. It went on at [80]-[81] to say that relevant evidence on the point would be “all clear expressions of the intention to solicit the custom of that state’s customers”. Such a clear expression could include actual mention of the fact that it is offering its services or goods “in one or more Member States designated by name” or payments to “the operator of a search engine in order to facilitate access to the trader’s site by consumers domiciled in various member states”.

The CJEU concluded at [93]:

“The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.”

In my judgment these matters are also capable of constituting evidence which bears upon the question of whether an offer for sale or an advertisement on a website is targeted at consumers within the European Union for the purposes of the first condition under Article 9(1)(a). It is perhaps worth emphasising that, at least in this context, the question is not one of the subjective intention of the advertiser, but rather one of the objective effect of its conduct viewed from the perspective of the average consumer.

Both L’Oréal v eBay and Pammer and Hotel Alpenhof were cases concerned with websites. It is common ground that the test of targeting the consumer in the relevant territory adopted by the CJEU in L’Oréal v eBay is essentially the same approach as had previously been adopted with regard to websites by the courts of this country: see Euromarket Designs Inc v Peters [2001] FSR 20 at [21]-[25], 1-800 Flowers v Phonenames [2001] EWCA Civ 721, [2002] FSR 12 at [136]-[139] and Dearlove v Combs [2007] EWHC 375 (Ch), [2008] EMLR 2 at [21]-[25].

Euromarket v Peters also concerned an advertisement in a magazine. The claimant, which ran a chain of shops selling household goods and furniture in the USA, applied for summary judgment on a claim for infringement of its UK registered trade mark for the words CRATE & BARREL. The defendants ran a shop in Dublin selling household goods and furniture under the same sign. One of the alleged infringements consisted of an advertisement placed by the defendants in the magazine Homes & Gardens. Jacob J set out the relevant facts as follows:

“10.

Homes & Gardens is a United Kingdom published magazine. The defendants had a single full page colour advertisement. At the top in large letters are words ‘Crate & Barrel’, beneath are two colour photographs, beneath them is the word “Dublin”, in the same large size and lettering. One reads the words naturally as ‘Crate & Barrel, Dublin’. In much smaller letters the advertisement goes on to say ‘soft furnishings: Orior by Design, furniture: Chalon’. In even smaller print at the bottom, the advertisement says ‘sofas, tableware, beds, lighting accessories’. Underneath that a website address is given, ‘www.crateandbarrel-ie.com.’ ‘ie’ is webspeak for Ireland. A telephone/fax number is given with the full international code for Ireland.

11.

Ms Peters says the advertisement was placed on the recommendation of the furniture supplier, Chalon. It was Chalon who actually placed the advertisement because they could get a better rate. Homes & Gardens was chosen because it is widely sold in the Republic and there is no exclusively Irish high quality interior furnishings magazine. The international dialling code was the idea of the photographer who caused it to be used on his own initiative and without the knowledge of Ms Peters. She says that although she knew that Homes & Gardens has a substantial United Kingdom circulation, she never expected or intended to obtain United Kingdom customers. She says the defendants have never sold any products in or to the United Kingdom. Doubtless they have sold some products in their Dublin shop to visitors from the United Kingdom.”

Jacob J expressed the provisional view that this was not infringing use for reasons he expressed as follows:

“16.

… I think there must be an inquiry as to what the purpose and effect of the advertisement in question is. In the present case, for example, the advertisement tells a reader, who knows nothing more, that there is an enterprise called ‘Crate & Barrel’ in Dublin dealing with the goods mentioned. It is probably a shop, for these are not the sort of goods one would order only by mail. Normally, of course, an advertisement placed in a United Kingdom magazine is intended to drum up United Kingdom business and will do so. This is so whether the advertisement is for goods or for a service or shop. But this is not a normal case. This is an advertisement for an Irish shop in a magazine which has an Irish and United Kingdom circulation.

….

18.

… It is Article 5 which sets out the obligatory and optional provisions as to what constitutes infringement. It is Article 5 which uses the expression ‘using in the course of trade … in relation to goods or services’ from which section 10 of the United Kingdom Act is derived.

19.

The phrase is a composite. The right question, I think, is to ask whether a reasonable trader would regard the use concerned as ‘in the course of trade in relation to goods’ within the Member State concerned. Thus if a trader from state X is trying to sell goods or services into state Y, most people would regard that as having a sufficient link with state Y to be ‘in the course of trade’ there. But if the trader is merely carrying on business in X, and an advertisement of his slips over the border into Y, no businessman would regard that fact as meaning that he was trading in Y. This would especially be so if the advertisement were for a local business such as a shop or a local service rather than for goods. I think this conclusion follows from the fact that the Directive is concerned with what national law is to be, that it is a law governing what traders cannot do, and that it is unlikely that the Directive would set out to create conflict within the internal market. … One needs to ask whether the defendant has any trade here, customers buying goods or services for consumption here. …”

In my judgment the factors referred to in L’Oréal v eBay and Pammer and Hotel Alpenhof are, with the exception of those which only relate to the online environment, equally relevant when considering a print advertisement. In addition, however, the nature of the publication and the territories in which it circulates are also relevant factors to take into account.

There is no dispute that Unibank has used the sign BDO in the course of trade without the consent of the Claimants, that the sign is identical to the Trade Mark and that it has been used in relation to services identical to those for which the Trade Mark is registered (particularly “consults in the field of investments” and “trust services” in Class 36 – services which are unaffected by the order for partial revocation). Thus the second to fifth conditions are satisfied. The dispute is as to the first and sixth conditions. As counsel for the Defendants made clear, however, the Defendants accept that, if the first condition is satisfied, then so too is the sixth condition. It is therefore only necessary for me to consider the first condition.

The Claimants complain about some 20 different advertisements which were placed in the following publications on the following dates:

General matters. As is common ground, each advertisement must be considered individually. Nevertheless there are certain aspects that it is convenient to consider collectively.

The first is the nature of the publications in which the advertisements appeared. With a couple of exceptions (USA Today and The Daily Telegraph), these are all English-language periodicals aimed at readers interested in financial matters, particularly readers with a business or professional interest in such matters. The Banker is published by The Financial Times Ltd with editorial offices in London. Global Finance is published by Global Finance Media Ltd with editorial offices in New York and London. Euromoney is published by Euromoney Institutional Investor plc with editorial offices in London.

The second is the circulation figures of the publications. Paragraph 8 of Mr MacGregor’s third witness statement contains a helpful summary of the circulation data. I shall not reproduce this in full, but give the following illustrative examples. The edition of The Banker for 1 December 2007 had a worldwide circulation of 29,497, of which 5,778 were circulated in the UK and the balance outside the UK. The other editions in issue had similar circulation figures. The edition of Euromoney for January 2008 had a worldwide circulation of 25,343, of which 5,844 were circulated in the UK, 13,430 in Europe and 3,314 in South East Asia (of which 218 were circulated in the Philippines). The other editions in issue had similar circulation figures. The Oxford Business Group Report had a worldwide circulation of 65,000, of which 16,900 were in Europe and 15,600 in Asia. The edition of USA Today in question had a worldwide circulation figure of 48,063, of which 6,985 were in the UK and the balance in the rest of Europe with none in South East Asia. The edition of The Daily Telegraph in issue had a worldwide circulation of 573,674, of which 554,356 were in the UK.

The third is the nature of the services being advertised. Broadly speaking, the advertisements fall into three main groups. The first group advertises Unibank’s services generally, with very little indication of the precise nature of those services beyond the fact that it is a bank. The second group advertises Unibank’s investment banking services. The third group advertises Unibank’s private banking and wealth management services. All these services are ones that in principle are capable of being provided on a cross-border basis.

The fourth is the fact that many of the advertisements mention awards received by Unibank. Frequently, these consist of or include an award from the publication in question. In such cases, I consider that the reader would appreciate that the award was at least a factor in the placing of the advertisement.

The fifth is the fact that, while many of the advertisements make it clear that Unibank is a bank in the Philippines, some do not refer to this at all.

The sixth is that counsel for the Defendants relied in his closing submissions upon evidence given by Ms Ibuna in cross-examination to the effect that customers for Unibank’s services had to be Filipino nationals or companies or to have Filipino nationals or companies as partners. This is not something that is stated in any of the advertisements in issue, however, nor is there is any evidence that this would be known to European readers of the periodicals in question. Accordingly, I do not consider that this in itself means that the advertisements are not targeted at consumers in the EU.

(1) The Banker, 1 December 2007. This advertisement is headed “If you’re looking for a partner in the Philippines, please take a moment to browse through our credentials”. The advertisement largely consists of a list of awards conferred upon Unibank for banking, finance and investment, including Bank of the Year in the Philippines in 2007 by The Banker. It does not contain any contact information, and so it is not possible to acquire any services by responding to the advertisement. (Such contact details were contained in a “corporate statement” published by Unibank in the same publication, but that is not complained of.) There is no mention of any Member State by name or by implication. In my judgment this advertisement is promoting Unibank’s Philippine services to a global audience, it is not targeted at consumers in Europe.

(2) Oxford Business Group Report – The Philippines, 2008. The text of this advertisement appears to be identical to that of number (1). My conclusion is the same: it is not targeted at consumers in the EU.

(3) Euromoney, 1 January 2008. The advertisement appears to have been placed by BDO Private Bank. There is no reference to the Philippines. The text promotes BDO Private Bank’s wealth management services by reference to its “Open Architecture approach”. It refers to investing “across institutional and geographic boundaries”. There is no mention of any particular Member State by name or by implication, but Euromoney is a publication which is predominantly aimed at European readers. A contact telephone number 848-6300 is provided without any indication that this is a Philippine number. In my judgment this advertisement is close to the borderline, but on balance I consider that a European reader of Euromoney would take this advertisement to be aimed at him or her.

(4) Fortune 500 Europe Edition, March 2008. The text of this advertisement appears to be identical to that of number (1). My conclusion is the same: it is not targeted at consumers in the EU.

(5) USA Today International Edition – Philippines Supplement, May 2008. The text of this advertisement appears to be identical to that of number (1). My conclusion is the same: it is not targeted at consumers in the EU.

(6) Euromoney, July 2008. This advertisement is similar to number (1), save that it includes awards for 2008 rather than 2005 and slightly different text. In addition, it includes a telephone number with an international code and a web address. Even allowing for the fact that Euromoney is predominantly targeted at European readers, my conclusion is the same: it is not targeted at consumers in the EU.

(7) Global Finance, 1 September 2008. This advertisement is headed “Investment Banking/ In the Philippines, one partner comes with solid credentials”. The advertisement largely consists of a list of awards conferred upon Unibank in the field of banking, finance and investment. It includes Unibank’s address in the Philippines and a telephone number with an international code. There is no mention of any Member State by name or by implication. In my judgment this advertisement is promoting Unibank’s Philippine services to a global audience, it is not targeted at consumers in Europe.

(8) Euromoney, 1 November 2008. The text of this advertisement appears to be identical to that of number (7). My conclusion is the same: it is not targeted at consumers in the EU.

(9) Euromoney, 1 February 2009. The text of this advertisement appears to be identical to that of number (3). My conclusion is the same: on balance, it is targeted at consumers in the EU.

(10) Euromoney – Private Banking and Wealth Management Guide, September 2009. This is a two-page “advertorial” for BDO Private Bank. The strapline refers to “Filipino investors”, and the text indicates that it is primarily aimed at such persons. Although the contact details include a telephone number with an international code, they also refer to “lounges” in five Philippine locations. In my judgment it is not targeted at consumers in the EU.

(11) Euromoney, 1 February 2010. This advertisement is headed “BDO Private Bank – driven by your trust in our partnership”. It mainly lists some awards, in particular Best Local Private Bank in the Philippines 2009-2010 from Euromoney. The other awards are also for private banking and wealth management in the Philippines. The contact details are the same as for number (10). There is no mention of any Member State by name or by implication. In my judgment this is aimed at a global audience interested in the Philippines, not targeted at consumers in the EU.

(12) The Banker, 1 July 2010. This advertisement is headed “There’s one bank you can be bullish about in any given weather - BDO”. The advertisement mainly consists of a list of awards conferred upon Unibank in the field of banking, finance and investment, two from Euromoney. It does not contain any contact information, and so it is not possible to acquire any services by responding to the advertisement. There is no mention of any Member State by name or by implication. In my judgment this advertisement is promoting Unibank’s Philippine services to a global audience, it is not targeted at consumers in Europe.

(13) Euromoney - Private Banking and Wealth Management in Asia Guide, July 2010. This is another two-page “advertorial” for BDO Private Bank. Although differently worded, the thrust of the text is similar to number (10): it is aimed at “the Filipino emerging affluent”. In my judgment this is not targeted at consumers in Europe.

(14) Euromoney, 1 February 2011. This is similar to number (11) and my conclusion is the same.

(15) The Banker, July 2011. This advertisement is headed “Award winning performance. Working for your success.” The advertisement mainly consists of a list of awards conferred upon Unibank in the field of banking, finance and investment in the Philippines. The only contact information provided is Unibank’s “.ph” web address. There is no mention of any Member State by name or by implication. In my judgment this advertisement is promoting Unibank’s Philippine services to a global audience, it is not targeted at consumers in Europe.

(16) Euromoney, 1 July 2011. This is an advertisement for BDO Private Bank headed “Aspiration brings achievement”. Although the text is somewhat similar to number (3), there are two important differences. First, it includes Unibank’s “.ph” web address and email address. Secondly, it mentions two awards for Best Private Bank in the Philippines. As result, I consider that this falls on the other side of the line. In my judgment this is not targeted at consumers in Europe.

(17) Euromoney, 1 February 2012. This is an advertisement for BDO Private Bank headed “Resolve hastens realization”. It is similar in content to number (16) and my conclusion is the same.

(18) Euromoney, 1 April 2012. This is an advertisement for BDO Capital & Investment Corp headed “Investment Banking/ Expand your vision”. It mainly consists of 12 small “tombstones” recording IPOs and other deals involving Philippine companies. It also lists some awards for deals in the Philippines or Asia. The contact details are for the Philippines, although they include an international telephone code. In my judgment this is not targeted at consumers in the EU.

(19) The Daily Telegraph – Philippines Supplement, 5 June 2012. This is a one-page “advertorial” headed “BDO: Ensuring partnership with best results”. The first paragraph reads:

“When BDO Unibank, Inc (BDO) coined the dictum ‘We find ways’ many years back, the Bank’s intent was to make it fitting not only for local clients but for local investors who view the Philippines as a potential hub.”

Furthermore, the second and fourth paragraphs both refer to what BDO can do for “foreign investors”. Thus this advertisement is explicitly targeted at foreign investors. It also includes a telephone number with an international code. Given these factors, and given that The Daily Telegraph predominantly circulates in the UK, I consider that this advertisement is targeted at consumers in the UK, and hence the EU. The fact that, as counsel for the Defendants emphasised, the supplement was produced as a result of an initiative of the Philippines Government to coincide with a state visit to the UK by the President of the Philippines does not alter this. Nor does the fact that Unibank was invited to place an advertisement by the Government.

(20) Euromoney, 1 July 2012. This is an advertisement for BDO Private Bank headed “A future fine-tuned to your specifications”. It is similar in content to number (16) and my conclusion is the same.

Conclusion. Numbers (3), (9) and (19) constitute use of the sign BDO within the European Union, and accordingly are prima facie infringements within Article 9(1)(a) subject to Unibank’s defence under Article 12(a). The remainder do not amount to use within the EU and therefore do not infringe.

The Claimants contend that the Second to Fifth Defendants have infringed the Trade Mark by use of the sign BDO Remit under Article 9(1)(b), alternatively 9(1)(c), of the Regulation.

I reviewed the law with respect to infringement under Article 5(1)(b) of the Directive, which corresponds to Article 9(1)(b) of the Regulation, at length in DataCard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [2012] BusLR 160at [272]-[289] and again more briefly in Red Bull GmbH v Sun Mark Ltd [2012] EHWC 1929 (Ch) at [71]-[78]. Nevertheless, there are two issues in the present case which require further consideration.

Comparison between the services. The assessment of the similarity of goods and services was considered by the CJEU in Case C-39/97 Canon KK v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507 at [23]:

“In assessing the similarity of the goods or services concerned … all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.”

It is clear that the Court of Justice was not intending this to be an exhaustive list. Thus there is no inconsistency between this list of factors and the more extensive list set out in the Opinion of Advocate General Jacobs at [45] which was in turn derived from the judgment of Jacob J in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 296-297.

Counsel for the Claimants cited OHIM’s Guidelines of November 2007 as providing some assistance as to the nature of the inquiry, and in particular the following passage at §1.4 (emphasis added):

“An absolute outer limit of similarity exists. An absolute borderline must be drawn between goods/services that are similar and those that are dissimilar. This means that one and the same pair of goods and services always are either within or outside that borderline.

A definition of the outer limit is required for several reasons:

First, there is a need for legal certainty.

Second, where the products are dissimilar, the earlier mark can be a basis for refusal of the CTM application only under the conditions set out in Art. 8(5). Those conditions confer enhanced protection on marks with reputation. It is often difficult to establish that the conditions, which include an unfair advantage or a detriment to the distinctive character or the repute of the earlier mark, are met.

Third, it is desirable that the assessment of goods and services by the Office and by the relevant authorities of the Member States run in parallel. For Member States’ trade mark authorities it will become indispensable to define an ‘absolute’ outer limit in the following two situations, which makes the need for the Office to make this definition as well obvious:

Where the Member State does not provide enhanced protection for marks with reputation. Art. 4(4)(a) of the TM Directive leaves it up to the discretion of the Member States to do so. Furthermore, a Member State may choose to provide such enhanced protection only for cancellation and infringement but not for opposition proceedings. (Germany, e.g., has done so.)

The definition of the borderline between (remotely) similar and dissimilar goods and services must be based on the following test:

The goods and services are similar if, supposing identical marks, the public could believe that they come from the same or economically-linked undertakings.”

Counsel for the Defendants submitted that this test was contrary to the case law of the Court of Justice. I agree with this. As the Court of Justice has repeatedly made clear, likelihood of confusion depends not just upon the similarity of the mark and the sign and the similarity of the respective goods and services, but also upon the level of attention of the average consumer, which depends in turn upon the nature of the goods or services, and upon the distinctive character of the mark: see in particular Case C-251/95 SABEL BV v Puma AG [1997] ECR I-6191 at [23]-[24], Canon v MGM at [17]-[19] and Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819 at [19]-[22] and [25]-[26].

Relevance of the defendant’s reputation. Counsel for the Defendants relied upon the reputation of Unibank among the users of the BDO Remit service as negating any likelihood of confusion. Counsel for the Claimants submitted that the defendant’s reputation amongst its own customers was not a relevant factor in the assessment of likelihood of confusion in a case such as the present.

In support of the contention that this was a relevant factor, counsel for the Defendants relied upon the judgments of Geoffrey Hobbs QC sitting as a Deputy High Court Judge in Whirlpool Corp v Kenwood Ltd [2008] EWHC 1930 (Ch), [2009] RPC 2 at [71], where he took into account the fact that the defendant’s brand name KENWOOD was “a strong and well-established trade mark for mixers”, and of Mann J in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWHC 2035 (Ch), [2011] FSR 1 at [137], where he took into account the fact that Asda “has its own strong reputation associated with its name”, as a factor negating the likelihood of confusion. In both cases the Court of Appeal upheld the judges’ conclusions.

Those were both cases in which the defendant’s goods were identical to those covered by the trade mark. Furthermore, in both cases the defendant’s trade mark was a household name. For those reasons, it was clear that the average consumer of the trade mark proprietor’s goods would have been aware of the defendant’s reputation. It does not follow that the defendant’s reputation amongst its own customers is a relevant factor where the goods or services are not the same and where it is not established that the average consumer of the trade mark proprietor’s goods or services would be aware of the defendant’s reputation as at the relevant date(s).

The services relied on by the Claimants. The Claimants rely upon the following services for the purposes of their claim under Article 9(1)(b):

As a result of my decision on the counterclaim, “administrative services and consults related thereto” has been cut down to “administrative services in the accounting, insolvency and tax fields and consults related thereto”, while “consults related to fiscal matters” and “consults in the field of financial matters” have been cut down to “consults in the field of corporate finance” with effect from 10 December 2007.

The average consumer. The Defendants contend that the average consumer of these services is either a company or other business or a wealthy individual. The Claimants contend that, at least in the case of some of the services, such as accountancy services, the average consumer may also be an individual of relatively modest means. I agree with the Claimants on this point. Even so, I consider that, having regard to the nature of the services, the average consumer will have a reasonably high degree of attention.

Distinctiveness of the Trade Mark. Counsel for the Defendants submitted that the Trade Mark was lacking in inherent distinctiveness because it was a simple three-letter combination. I do not accept this submission for the following reasons. First, it is a short and memorable combination of letters. Secondly, it is not in the least descriptive (or even allusive) of services in classes 35 and 36. Thirdly, apart from the Claimants and Unibank, there is no evidence of any other users of this combination as a trade mark in the field covered by classes 35 and 36. Even in remote fields, the only other users of the combination of which there is evidence are the British Darts Organisation and the British Druid Order.

The Defendants accept that the Trade Mark had acquired an enhanced distinctive character through use as at the relevant dates in relation to accountancy, audit and tax services. The Claimants contend that it had also acquired an enhanced distinctive character through use in relation to the other services listed in paragraph 149 above, but the Defendants dispute this. In my judgment the evidence does not establish that the Trade Mark had acquired an enhanced distinctive character through use in relation to the other services as at 2004-2007.

Comparison between the Trade Mark and the sign. The sign consists of the Trade Mark with the addition of the word “Remit”. That word is descriptive of the service in relation to which the sign has been used. It follows that there is a high degree of similarity between the sign and the Trade Mark.

Comparison between the services. The Claimants contend that there is a reasonable degree of similarity between the respective services whereas the Defendants contend that there is no similarity. I shall consider the British Sugar factors in turn.

The first factor is the uses to which the respective services are put. The Claimants’ services are used to improve the operation of the client’s business (including doing things that the client either cannot or does not wish to do for itself), to ensure legal and regulatory compliance by the client, to increase the finance available to the client, to increase the client’s wealth and to minimise the client’s tax exposure. The Defendants’ remittance services are used for low value transfers of money from individuals here (mainly OFWs) to individuals (mainly dependents) in the Philippines for the latter’s domestic purposes.

The second factor is the users of the services. I have already addressed the users of the Claimants’ services above. As I have just indicated, the users of the Defendants’ services are individuals who are mainly OFWs. As such, they are mainly people employed in the NHS, the hospitality industry, domestic service and other relatively low-paid occupations.

The third factor is the physical nature of the services. All the services relied on by the Claimants involve the provision of advice and consultation, which one would expect to take place in an office. They will generally involve having lengthy discussions with the businesses and individuals involved and producing detailed written advice. Some will involve the use of sophisticated software. The remittance services performed by the Defendants involve the acceptance of individual payments by consumers of relatively small amounts of money and making them available to recipients in the Philippines. Counsel for the Claimants emphasised that some of the Claimants’ services involve the transfer of money. That I accept, but the nature and context of the transfers are rather different.

The fourth factor is the trade channels through which the services are provided. The Claimants’ services involve individualised consultations and meetings with specialist professionals. The services complained of are consumer services which are not individualised or provided by professional persons. They are made available to consumers through small outlets on the high street with counters which are physically accessed by the user, or through a consumer-accessible internet site.

The fifth factor is whether there is competition between the services. There is no competition between the Defendants’ remittance services and the registered services. Nor are they really complementary. The most one can say is that the Defendants’ remittance services are in the same broad field of financial services as the registered services.

Taking all of these factors into account, I conclude that the Defendants’ remittance services have a low degree of similarity with the registered services.

The context of the use of the sign. It is common ground that the Defendants’ use of BDO Remit must be considered in context. The Second to Fifth Defendants’ remittance services are provided in the environments provided by the Second to Fifth Defendants’ premises which I have described above. Furthermore, many of the posters and flyers which feature the sign have Filipino text as well as English text. Still further, some of the materials contain references to Unibank.

Likelihood of confusion. The distinctive character of the Trade Mark and the high degree of similarity between the sign and the Trade Mark are factors favouring a likelihood of confusion. The attention of the average consumer, the low degree of similarity between the respective services and the context of the use of the sign are factors militating against a likelihood of confusion.

Counsel for the Defendants relied strongly on the absence of evidence of confusion despite the long period of time that had elapsed since the use complained of commenced. As he submitted, it is clear that the Claimants have gone to some effort to try to find evidence of confusion.

Against this, counsel for the Claimants relied on the evidence of Mrs Wicks as showing that there had been confusion. Her evidence was that, since December 2010, there had been regular telephone calls to BDO LLP’s London office by people who wanted to contact Unibank or a provider of its remittance services. Her understanding was that most of the people who telephoned by mistake had obtained BDO LLP’s telephone number from the internet. It appears likely that this only started to occur as a result of a change in the manner in which Google search results are presented. What now happens if one types “BDO” into google.co.uk is that the name, address and telephone number of BDO LLP are revealed as part of the search, and without having to click through to any particular website. Someone looking for BDO bank or BDO remittance services might well ring that number because it was the only number which appeared on the screen.

Counsel for the Defendants submitted that this was confusion the wrong way round. In my judgment this does not mean that this evidence is completely irrelevant: it confirms what is fairly self-evident anyway, namely that the names of BDO LLP and Unibank are sufficiently similar for one to be taken for the other in the absence of any differentiating context. Nevertheless, it does not establish that the average consumer of the registered services who encounters use of the sign BDO Remit in relation to remittance services in the context in which the Defendants have used it will think that the provider of the service is BDO LLP or an undertaking economically connected with it.

As I have said in a number of judgments, absence of evidence of actual confusion is not necessarily fatal to a claim under Article 9(1)(b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. In the present case over eight years have elapsed without any such evidence emerging. In my judgment this is an important factor in the present case.

Taking all of the relevant factors into account, I conclude that there is no likelihood of confusion on the part of the average consumer.

I reviewed the law with respect to infringement under Article 9(1)(c) of the Regulation in Red Bull v Sun Mark at [87]-[98]. As I noted there, it is necessary for the trade mark proprietor to establish one of three kinds of injury.

In the present case the Claimants allege that the Defendants’ use of the sign is detrimental to the distinctive character of the trade mark (often referred to as “dilution”). Guidance with regard to this form of injury was provided by the CJEU in the context of Article 4(4)(a) of the Directive in Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd [2008] ECR I-8823. The following points are of particular note:

Did the Trade Mark have a reputation at the relevant dates? As noted above, the Defendants do not dispute that the Trade Mark had a reputation in relation to accountancy, audit and tax. The Claimants contend that it had also acquired a reputation in relation to a range of other services, but the Defendants dispute this. In my judgment the evidence does not establish that the Trade Mark had a reputation in relation to any other services in 2004-2007. I would add that, even if the Trade Mark did have a reputation in relation to the wider range of services, I do not consider that it would make any difference to the outcome.

Does use of the sign give rise to a link between the sign and the Trade Mark in the mind of the average consumer? In my judgment the distinctive character and reputation of the Trade Mark, the similarity of the services in relation to which the Defendants have used the sign to those for which the Trade Mark has a reputation and the similarity between the sign and the Trade Mark mean that the sign will call the Trade Mark to mind. Accordingly, use of the sign BDO Remit does give rise to a link in the mind of the average consumer.

Is the use of the sign detrimental to the distinctive character of the Trade Mark? The Claimants have adduced no hard evidence that use of the sign has been, or is seriously likely to be, detrimental to the distinctive character of the Trade Mark. In essence, the Claimants’ case amounts to an assertion that the uniqueness of the Trade Mark in the financial services sector has been undermined by the Defendants’ use of BDO Remit, and therefore the distinctive character of the Trade Mark has been reduced.

I accept the first part of this proposition, but not the second. Given that the Defendants have been using BDO Remit since 2004, if such use had weakened the ability of the Trade Mark to identify the services in relation to which it is used as coming from the Claimants, I would expect there to be some evidence of that. There is no such evidence, and in particular there is no evidence of any change in the economic behaviour of relevant consumers. (Indeed, it does not appear that the Claimants themselves were even aware of the Defendants’ use of BDO Remit until around December 2010.) Nor is there any evidence of any likelihood of such a change.

In my view, the explanation for the absence of such evidence is not hard to discern. The Trade Mark is not the kind of trade mark whose cachet is likely adversely to be affected by the same mark being used by other people in other fields. Furthermore, the Defendants’ use of BDO Remit is on a small scale in a niche area of financial services which is distinct from the fields in which the Claimants operate and there is no overlap between the Claimants’ customers and the Defendants’ customers.

Is the use without due cause? Since this question does not arise, I will confine myself to saying that, if I had concluded that the Defendants’ use of the sign was detrimental to the distinctive character of the Trade Mark, I would not have held that the Defendants had established due cause.

Unibank contends that, even if any of the uses complained of fall within Article 9(1) of the Regulation, it has a defence under Article 12(a). In the light of my preceding conclusions, it is only necessary for me to consider this defence in relation to the advertisements which I held to be prima facie infringements under Article 9(1)(a).

Own name. In Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd [201] EWCA Civ 110, [2010] RPC 16 the Court of Appeal held at [59]-[72] that the defence under Article 12(a) was potentially available in respect of a trading name, as well as the corporate name, of a company.

In accordance with honest practices. I reviewed the law with respect to the proviso to Article 6 of the Directive, corresponding to Article 12 of the Regulation, in Samuel Smith v Lee at [111]-[120].

Own name. The Claimants dispute that BDO was Unibank’s name at least until recently. Whatever may have been the position at earlier dates, in my judgment it is clear on the evidence that, as at the dates on which advertisements (3), (9) and (19) were published, BDO was a trading name of Unibank.

In accordance with honest practices. I shall consider the list of factors identified in Samuel Smith v Lee at [118] in turn.

(i) 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. There is no evidence as to what trade mark searches Unibank had carried out by 1 January 2008, the date of advertisement number (3), or by 1 February 2009, the date of advertisement number (9). What is known is that on 6 June 2007 and 17 July 2007 the Philippines Intellectual Property Office issued official actions to Unibank in connection with nine pending applications by Unibank to register service marks, including two for BDO REMIT, based on a Philippine registered trade mark for BDO and device obtained by Stichting BDO on 5 August 2004. On 30 January 2008 Unibank filed a petition for cancellation of that registration. In my view a prudent and responsible businessman in the position of Unibank would have investigated the matter thoroughly upon receipt of the official actions, including carrying out trade mark searches in the major countries in which its advertising was appearing. Thus even if it was not aware of the Trade Mark by the dates on which advertisements (3) and (9) were published, it should have been. By the date of advertisement number (19) it was certainly aware of the Trade Mark, since that was well after the commencement of these proceedings.

(ii) Whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions. Unibank does not rely upon any legal advice it may have received.

(iii) The nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant’s goods or services. The use complained of is as a trade mark for Unibank’s services.

(iv) 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. In the case of advertisements (3) and (9), Unibank did not know that the Claimants objected. Nor do I consider that it should have appreciated that the Claimants would object. In the case of advertisement (19), Unibank did not know that the Claimants objected, since the Claimants’ infringement claim in respect of the advertisements was only introduced into the proceedings by amendment in early November 2012. Nevertheless, I consider that if Unibank had addressed its mind to the question, it ought to have appreciated that the Claimants would be likely to object.

(v) Whether the defendant knew, or should have appreciated, that there was a likelihood of confusion. It is first necessary to consider the prior question of whether the advertisements gave rise to a likelihood of confusion. In my judgment advertisements (3) and (9) did give rise to such a likelihood, since an average consumer of the Claimants’ services might well think that BDO Private Bank was connected in some way with the Claimants. In the case of advertisement (19), on balance I do not consider that it did give rise to such a likelihood. This is because the advertisement appears on the same page as an article about Unibank, and an article about and advertisement for SM Investments Corp, another company in the SM group. Read in context, therefore, I think that the average consumer would appreciate that Unibank was not connected with the Claimants. There is no evidence that Unibank knew that there was a likelihood of confusion in the case of advertisements (3) and (9). Nor do I consider that it should have appreciated this.

(vi) Whether there has been actual confusion, and if so whether the defendant knew this. There is no evidence of any actual confusion.

(vii) Whether the trade mark has 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. The Trade Mark does have a reputation, but there is no evidence that it has been adversely affected.

(viii) Whether the defendant’s use of the sign complained of interferes with the owner’s ability to exploit the trade mark. In my view Unibank’s use of the sign BDO in these three advertisements did not interfere with the Claimants’ ability to exploit the Trade Mark.

(ix) Whether the defendant has a sufficient justification for using the sign complained of. I have no doubt that Unibank was justified in using the sign BDO in the manner in which it did.

(x) The timing of the complaint from the trade mark owner. The Claimants did not complain in respect of advertisements (3) and (9) until years afterwards. Indeed, it does not appear that the Claimants even noticed those advertisements at the time. In the case of advertisement (19), they complained reasonably promptly.

In the case of advertisements (3) and (9), I have no hesitation in concluding that Unibank’s use of the sign BDO did not amount to unfair competition with the Claimants. In the case of advertisement (19), I do have some hesitation, but nevertheless I am not convinced that this amounts to unfair competition.

For the reasons given above I conclude that: