Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel) [2016] EWHC 3103 (Ch)
This was a trade mark and passing off case concerning the right to use the name “Titanic”. Titanic Spa commenced proceedings against the Titanic Hotel for trade mark infringement and passing off, relying upon its “Titanic Spa” trade mark. The Titanic Hotel was linked to the famous Titanic Quarter development in Belfast. The companies behind Titanic Quarter had trade marks that pre-dated Titanic Spa’s mark and counter-sued Titanic Spa for trade mark infringement. In separate proceedings before the Registrar, Titanic Spa had obtained an order that one of the Titanic Quarter trade marks be revoked for non-use.
The infringement trials and Titanic Quarter’s appeal against the Hearing-Officer’s decision were heard at the same time by Carr J. Carr J found that Titanic Spa’s claimed succeeded in part against the Titanic Hotel. However, he held that the various steps Titanic Hotel had taken to reduce confusion entitled them to take advantage of the own name defence in the future. Carr J further overturned the Hearing Officer’s decision on non-use, finding that the Hearing Officer erred in refusing to accept additional evidence of use of the marks.
Hugo Cuddigan QC and Kathryn Pickard appeared for the Titanic Hotel and Titanic Quarter companies.