Can “Vantage” registered for “incentive schemes” be used to stop use of “Vantage Rewards” for a customer loyalty programme?
Who: AAH Pharmaceu Who: AAH Pharmaceuticals Limited and Vantagemax Plc (2002)
When: April 2002
Where: The Chancery Division of the High Court, London
AAH Pharmaceuticals, the claimants in this case, ("AAH") was a wholesale distributor of pharmaceutical and healthcare products to the "Vantage" chain of independent retail pharmacies. AAH owned the registered trademark "Vantage" registered in class 35 for "operating incentive schemes, advice and information relating thereto." It sued Vantagemax for trademark infringement for operating a loyalty program under the name "Vantage Rewards." Consumers who were a member of the Vantage Rewards program could collect points whenever they bought products from participating outlets and exchange these for gifts. AAH argued that it was an open and shut case in which exactly the same mark was being used in connection with precisely the products for which AAH's mark had been registered.
Vantagemax defended stoutly. It argued first of all that "Vantage Rewards" was not "identical" to "Vantage". It also submitted that a loyalty card scheme of the kind it was operating under the "Vantage Rewards" brand was not an "incentive scheme" at all and was therefore not within the class of products for which the AAH mark was registered.
Pumfrey J was clear in his judgement. He had no difficulty with the meaning of "incentive scheme". This was evidently a scheme which had the purpose of providing a reward to participants and accurately described exactly what the Vantage Rewards scheme was all about.
As for the question of whether Vantagemax was using the identical brand "Vantage", the evidence persuaded Pumfrey J that in reality the "Rewards" element of Vantagemax's branding was subsidiary and the sign actually used was "Vantage". On these two counts, therefore, the court found in favour of AAH.
There was another issue, however, on which, since the hearing in question was for summary judgment, it felt it could not form a conclusion and which therefore had to go to a full trial. This was the question of whether AAH had in fact itself operated "incentive schemes" as the term was normally understood for a period of five years. If it turned out that it had not, then despite AAH winning on the other two points, Vantagemax's counterclaim for the registration to be revoked on grounds of non-use would succeed.
Why this matters:
The case highlights the crucial importance of careful drafting of the products for which a brand is to be registered. It also underlines the need for registered brand owners to ensure that no continuous period of five years goes by without some degree of use being made of the brand in respect of all the goods or services for which it is registered.