Flight giant United Airlines was unimpressed with the use of “United Airways” by minnow United Airways Bangladesh. Armed with a trade mark registration, UA applied to Chancery for summary judgment against the 7 plane airline. It defended saying there was no evidence of confusion. Rosanna Foster and Emily Devlin report the verdict.
Topic: Brands
Who: United Airlines Inc v (1) United Airways Limited (2) United Airways Bangladesh Limited
When: 24 June 2011
Where: High Court, Chancery Division
Law stated as at: 7 July 2011
What happened:
The US airline United Airlines ("UA") has been awarded summary judgement and permanent injunctive relief against the Bangladeshi airline United Airways Bangladesh Limited ("UAB") in relation to allegations of trade mark infringement and passing off. UA argued that UAB's use of "UNITED AIRWAYS" in English or Bengali on its seven aircraft fleet flying between London and Dhaka during 2009 infringed its marks "UNITED" and "UNITED AIRLINES".
Trade mark infringement
UA alleged trade mark infringement under the Trade Marks Act ("the Act") sections 10(1), 10(2), and 10(3).
Under s10(1) UA claimed that UAB used a sign identical to UA's for identical services. Although the "AIRLINES" and "AIRWAYS" marks are not identical, case law has established that marks will still be deemed to be identical when the differences between them are so insignificant that they would go unnoticed by the average consumer.
In this case Vos J decided that the words "AIRLINES" and "AIRWAYS", while not synonymous, convey an identical meaning to the average consumer. Further to this, "UNITED" was a generic word and did not implicitly refer to either mark in itself. The differences between the marks would therefore be unnoticeable by the average consumer and likely to result in the belief that UAB is UA's subsidiary, particularly as "UNITED" was written in larger lettering on UAB's website.
In the context of its second claim that there was trade mark infringement under section 10 (2) of the Act (the type of infringement that occurs where the branding used by the defendant is not exactly the same as, but confusingly similar to, the mark allegedly infringed), UA claimed there was a likelihood of confusion under s10(2) of the Act because UAB's use of "UNITED AIRWAYS" for airline services was similar to UA's mark "UNITED AIRLINES".
UA argued that confusion should be assumed, whereas UAB argued that as UA had failed to adduce evidence of confusion, a trial was required to allow this to happen. The court applied the well established global appreciation test which considers the imperfect impression of signs and marks on a consumer. Not being in possession of the 'intimate knowledge' required to distinguish between "AIRLINES" and "AIRWAYS", the court held, the average consumer was found likely to understand UAB as UA's subsidiary or as having some economic connection with UA.
UA further claimed that under s10(3) of the Act UAB was infringing its trade mark by taking unfair advantage of the reputation inherent in UA's well-established "UNITED AIRLINES" mark by deliberately employing an identical sign without offering any good reason for doing so. The deliberate and unjustified choice of the "UNITED AIRWAYS" mark was held by the court to indicate bad faith on UAB's part and thus precluded the availability of the attempted 'own name' defence under s11(2) of the Act as use was not in accordance with honest commercial practice.
Passing off
The court found in favour of UA on the passing off claim as well. It found that goodwill in UA's mark could be established on the evidence and that a misrepresentation had occurred; UAB's use of the "UNITED AIRLINES" sign was likely to lead the public to believe that its services were UA's services. UAB's use of the mark damaged UA's goodwill even if immediate damage to UA's business could not be established. Therefore the three essential ingredients of "passing off", namely goodwill, misrepresentation and damage, had been made out.
Summary judgment granted
The Court could see no realistic prospect of UAB defending any of the above four claims, and therefore awarded UA summary judgment and final injunctive relief restraining the use of its marks by UAB.
Why this matters:
This case acts as a warning to those considering using a mark which is identical or highly similar to a well established mark, as the word "identical" for the purposes of s10(1) has been widely construed in this case. A company must have good reasons for choosing a similar mark, unconnected to the success associated with the other mark, in order to avoid being accused of taking unfair advantage of it.
It is also notable that the services in this case were considered identical despite the fact that UA and UAB do not fly any of the same routes, giving UA a monopoly in the use of the mark "UNITED AIRLINES" in relation to airline services. This may be a further consideration for those considering using a mark similar to one already used in the wider service area.
UA's decision to seek summary judgment demonstrates the opportunity claimants with a strong case of trade mark infringement have to get an injunction to restrain use of infringing marks quickly without the expense of a full trial. A successful party will also have a reasoned judgment which can be used to demonstrate to future infringers how seriously the party treats trade mark infringement, and its previous success in obtaining injunctive relief.
