Delta Hotel Victor

Trade marks can be invalidated where they are found to be identical to an earlier mark registered for similar services and where this gives rise to a likelihood of confusion. However, applying this test in practice can be more complicated, particularly assessing which goods and services are similar. 

In the recent High Court decision of Marriott Worldwide Corp V Delta Air Lines Inc, the Court upheld a UK Intellectual Property Office decision to partially invalidate Marriott’s registration for the word DELTA. The case has provided some helpful guidance for the application of the test of complementarity for services in the hotels and leisure industry and demonstrates the potential breadth of the test of similarity in relation to services in that sector.

Background

Delta holds an EU and UK trade mark for the word DELTA registered on 18 June 1998 and 18 September 1992 respectively. These marks are both registered in class 39, which for the EU mark covers “Air transportation services” and for the UK mark covers “Storage services for freight and for goods and air transport services, but not including any services relating to air courier services”.

Marriott owned a UK trade mark for the word DELTA  that was registered on 11 December 2015. This mark covered services in classes 35 and 43.

Subsequently, Delta applied, under section 5(2)(a) and 5(3) of the Trade Marks Act 1994, for the revocation of Marriott’s mark on the basis of its earlier marks. The Hearing Officer at the UK Intellectual Property Office (“UKIPO”) invalidated Marriott’s mark in class 43, notably for “Hotel services; restaurant, bar and lounge services; resort lodging services; reservations services for hotel accommodations”.

The Appeal

Marriott appealed the decision arguing that, while it accepted that the marks were identical, the services were sufficiently different that confusion between them would be avoided.

However, the Court confirmed that the Hearing Officer was entitled to conclude that hotel services, resort lodging services and reservations services for hotel accommodations were similar to air transportation services because the services were complementary and would be sold through the same trade channels. When a person uses air transportation services to go on holiday, they would also require hotel services for accommodation and sometimes, in the case of package holidays, flights and hotels would be included together. This similarity was sufficient to give rise to a likelihood of confusion.

Additionally, the Court upheld the Hearing Officer’s decision that the use of Marriott’s mark would take unfair advantage of Delta’s mark and hence rendered Marriott’s registration invalid for restaurant, bar and lounge services. The Hearing Officer reasoned that an average consumer encountering retail services of that nature using the word DELTA in the context of an airport would think these were offered by Delta or an economically linked company. Use of Marriott’s mark would therefore bring to mind Delta, creating a link despite the differences in services offered.

Comment

This decision highlights the risk of applying for a mark which is identical (or similar) to an earlier mark for services which are complementary to the services covered by the earlier mark. In an industry which covers a vast range of different goods and services, it is particularly interesting to note the willingness to find similarity (even at a low level) between services that a consumer might encounter on his or her ‘journey’ on a holiday (e.g. through the airport and during the course of their subsequent stay). This demonstrates the importance of clearing any potential new brand, prior to launch, across a wider range of goods and services to minimise the risk of a later challenge from another rightsholder in the hotels and leisure sector, even if not a direct competitor.