When the Interactive Agency re-launched as the “Chemistry Group”, Dublin-based “Chemistry Communications Services” were not impressed. Did the Irish agency’s trade mark registrations give it a clear case?
Who: Chemistry Strategic Communications Limited and The Chemistry Group
Where: Chancery Division of the High Court, London
When: Autumn 2002
In the summer of 2002, digital marketing services agency "the Interactive Agency" changed its name and relaunched as "The Chemistry Group"("CG"). Interactive came out of a merger in early 2001 of Manifesto and TPD Interactive. Interactive's choice of the Chemistry Group name did not go down well with Dublin-based marketing services agency Chemistry Strategic Communications Limited ("CSC") when by chance CSC received an invoice from CG. CSC's position was "We have a European Union – wide trade mark and we intend to protect it". The case, as they say, continues with CG expressing the hope that the matter can soon be resolved.
An on-line search quickly reveals that there are only three Community Trade Mark Register entries featuring the word "Chemistry" in connection with advertising and marketing services. Two of these are in the name of CSC. The first has achieved registration and is a "composite" trademark consisting of a stylised letter c and the word "CHEMISTRY". The second entry reveals that on 5 September 2002 CSC filed an application to register the plain word "CHEMISTRY" as a community trademark in respect of various services including advertising and marketing.
Why this matters:
Since CG's use of the CHEMISTRY branding has apparently been only in the UK, CSC must sue here and they have two legal grounds. These are trade mark infringement and passing off. Passing off will be a challenge for CSC unless they can show they have traded sufficiently in the UK (as opposed to Ireland) to build a UK commercial reputation which makes the "CHEMISTRY" word distinctive of CSC's services in the UK to the exclusion of any other business. If that is a problem for CSC, and this may well be the case if its activities to date have been essentially in its home country, then it is left with a CTM infringement action.
Such an action cannot be brought in respect of the current, pending application to register the plain typeface CHEMISTRY branding, for the simple reason that it is still pending. This means they will have had to have based their proceedings on the "composite" registration. Here, it is interesting to note that well before CSC achieved their registration of the composite as a CTM, VALUE BEYOND CHEMISTRY had been registered as a CTM in respect of advertising and marketing services by Swiss Company Ciba Specialty Chemical Holdings Inc. Given that these two marks have been allowed to co-exist by those responsible for the CTM register, there has to be a question as to whether CG's use of what is only one part of the CSC logo will be regarded as a sufficiently close copy to give rise to infringement.
The wider issue here is the need for all those relaunching their businesses under new names to conduct comprehensive availability searches. It may well be that CG conducted their own searches in this case and on advice decided that any complications that might arise as a result of their choice should be capable of early and commercial resolution. One hopes for their sake that their hunch was right.