Extreme Networks Limited v Extreme E Limited
[2024] EWCA Civ 1386
Marriott Worldwide Corporation v Delta Air Lines, Inc.
10 February 2023
[2023] EWHC 283 (Ch)
High Court
Marriott tried to register the trademark "DELTA" for hotels and other services, but Delta Airlines already used it for flights. A judge decided that people might confuse Marriott's hotels with Delta Airlines because they are often booked together (e.g., package holidays), so Marriott couldn't use the name. A previous agreement between the companies didn't change this.
Key Facts
- •Marriott Worldwide Corporation (Appellant) appealed a decision by the UK Intellectual Property Office (UKIPO) Hearing Officer maintaining Delta Air Lines, Inc.'s (Respondent) UK trademark "DELTA" for certain services.
- •The appeal concerned the invalidation of the "DELTA" trademark under sections 5(2)(a), 5(3), and 5(4)(a) of the Trade Marks Act 1994, with the Appellant relying on section 5(5) (consent).
- •The dispute centered on the similarity of services between the Appellant's and Respondent's marks, specifically in classes 35 (retail services) and 43 (hotel and restaurant services).
- •A 2015 co-existence agreement between the Appellant's predecessor and the Respondent was a key point of contention regarding consent or due cause.
Legal Principles
Likelihood of confusion assessment considers the average consumer, nature of purchasing act, and complementary relationship between goods/services.
Trade Marks Act 1994, sections 5(2)(a), 5(3)
Similarity assessment considers whether goods/services are complementary (Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc; British Sugar Plc v James Robertson & Sons Ltd; Kurt Hesse v OHIM; Boston Scientific Ltd v OHIM).
Case law cited in the judgment
Unfair advantage under section 5(3) may exist even without subjective intent to exploit reputation (Jack Wills Limited v House of Fraser (Stores) Limited).
Case law cited in the judgment
Section 5(5) prevents registration only where there's explicit consent from the earlier trademark holder; due cause requires a high threshold (Leidseplein Beheer BV v Red Bull; Zino Davidoff v Levi Strauss; Sebago Inc. and Ancienne Maison Dubois et Fils SA v GB-Unic SA).
Case law cited in the judgment
Appeals against UKIPO decisions are reviews, not rehearings; deference is given to the Hearing Officer's expertise (Reef Trade Mark).
Case law cited in the judgment
Outcomes
Appeal dismissed.
The Hearing Officer's decision was not found to be wrong in principle. The court upheld the findings on similarity of services (based on complementarity) and likelihood of confusion, rejecting the Appellant's arguments regarding judicial notice, the application of the correct legal tests, and the interpretation of the co-existence agreement.