The following is an article re-published from WTR Daily by Jude Antony and Kurt Shead on the Intellectual Property Enterprise Court decision in Stone v Wenman, in relation to a trade mark infringement and passing off dispute between two holistic therapists.
- The claimant sued for infringement of her registered mark ARCHANGEL ALCHEMY in Class 41
- The defendant counterclaimed on the grounds of invalidity of the mark, and the existence of earlier unregistered rights by virtue of passing off
- The IPEC held that the claimant's mark was invalid and that the defendant had generated enough goodwill in her own mark for a successful passing-off claim
In Stone v Wenman ( EWHC 2546 (IPEC)), the Intellectual Property Enterprise Court (IPEC) concluded that a holistic therapist had built up enough goodwill in the unregistered marks THE ARCHANGEL ALCHEMIST and ARCHANGEL ALCHEMY to succeed in a passing-off claim against a competitor therapist who held and used a UK trademark registration for ARCHANGEL ALCHEMY.
Claire Stone became the registered proprietor of the UK trademark ARCHANGEL ALCHEMY on 3 October 2019 in Class 41. Prior to registration, she had started to offer an online "metaphysical education" course under the brand ARCHANGEL ALCHEMY in or around July 2019. In February 2020 it came to Stone's attention that Alexandra Wenman had also been offering an online course on her website under the sign of ARCHANGEL ALCHEMY since the previous autumn.
Stone subsequently brought a claim against Wenman, alleging that such use infringed her registered mark under Section 10(1) of the Trademarks Act 1994. Wenman brought a counterclaim in response, arguing that she had been offering such services under the signs THE ARCHANGEL ALCHEMIST and ARCHANGEL ALCHEMY since 2010, and that she had built up goodwill in the signs as a result. Her counterclaim was made up of two constituent parts:
- that Stone's mark was invalid under Sections 5(4) and 5(4)(a) of the act; and
- that Stone's registered mark was not infringed by use in the course of trade of an earlier right use prior to registration of the registered mark in question (Section 11(3)).
A counterclaim for passing off and an application for a declaration of invalidity of Stone’s trademark was also submitted.
HHJ Clarke held that Stone's registered trademark was invalid pursuant to Section 5(4)(a) of the act; the assessment date as to the state of Wenman's goodwill in her signs was considered to be the first date of activity by Stone that would have given rise to a passing-off action. Conversely, Wenman's counterclaim for passing off was successful; the evidence showed subsisting goodwill - which was more than just de minimis - in both of her signs at the same date. As a result, Stone's original action for infringement of her registered trademark failed and was dismissed by the judge.
The judgment in this case should be heeded by proprietors of registered trademarks in the United Kingdom. If they choose to litigate against commercial opponents, they should do so from an informed perspective; if they fail to conduct sufficient background research into the activities and rights of the potential defendant, they could find themselves the recipient of a valid counterclaim. The protection of a registered trademark is not always as strong as it seems and can be trumped by prior unregistered rights.
Sometimes, just sometimes, angels can slip and fall.
This article first appeared in WTR Daily, part of World Trademark Review in November 2021. For further information, please go to World Trademark Review.
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