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6 December 2016Trademarks

Health spa sinks hotel in ‘Titanic’ legal battle

Titanic Spa, a health spa based in the UK, has won a trademark infringement battle with a hotel also based in Britain.

Mr Justice Carr ruled in favour of Titanic Spa on Friday, December 2.

Titanic Spa, based in Huddersfield, sued Titanic Hotel Liverpool in July this year for trademark infringement and passing off.

The health spa owns a mark for the term ‘Titanic Spa’, which was registered at the UK Intellectual Property Office (IPO) in 2011.

In March last year, Titanic Spa brought the trademark infringement and passing off claim at the Intellectual Property Enterprise Court (IPEC) against Titanic Hotel Liverpool, which opened in June 2014.

That same year, publicity materials released by the hotel included references to a spa called “T-Spa” in the establishment.

In August and November 2014, Titanic Spa sent letters complaining about the use of “T-Spa”, and the hotel rebranded its spa as “Maya Blue Spa” in April this year.

However, Titanic Spa maintained its claim against Titanic Liverpool in the IPEC and complained about the use of “Titanic” in the name of the hotel.

Before the IPEC litigation had started, Titanic Spa filed an application at the IPO to cancel a trademark for the term ‘Titanic Quarter’ based on non-use. The mark was revoked this year.

The owner of the mark, Titanic Trademark Limited (TTL)—from which Titanic Liverpool operates a licence—appealed against the decision. TTL appealed to the High Court against the decision of the hearing officer not to admit certain evidence which was filed shortly before the hearing.

Then, in July this year, Titanic Liverpool issued a claim at the High Court for infringement of the ‘Titanic Quarter’ marks by Titanic Spa. It cited the revoked UK trademark and a European Union trademark, which Titanic Spa is also trying to revoke.

At a hearing in July last year, Mr Justice Norris ordered that the IPEC claim, the High Court claim and the appeal should all be heard together.

Now, Carr has ruled that Titanic Spa’s trademark was infringed by the hotel and that consumers had been confused by the two companies’ names.

He said that “visually and aurally” there is similarity between the marks and the signs, as both contain the word “Titanic”.

Further, he said, Titanic Liverpool “cannot rely on own name defence” with regard to acts of past infringement.

Carr rejected the challenge of validity to Titanic Spa’s mark by Titanic Liverpool.

Amy Burton, Titanic Spa’s director of operations, said: “The decision to go to court was not one we took lightly. We are well known in the industry and have no fear of healthy competition but we couldn’t stand by and allow our brand to be diluted in this way.”

She added that “no business owner wants to go to court, devoting resources to litigation rather than building on their success”.

A spokesperson from Titanic Hotel Liverpool told WIPR that it cannot comment on the case as it has not been fully concluded. For example, the judge allowed the appeal against the decision to revoke the UK ‘Titanic Quarter’ mark and the hotel is allowed to use the sign for hotels in the UK.

Jo Joyce, associate at Taylor Wessing and the solicitor who acted on behalf of Titanic Spa, said: "Titanic Spa has spent over two years dealing with the customer confusion that has arisen as a result of the infringement of its intellectual property rights.

We are hopeful that, in the light of this decision, changes will be made to ensure that such confusion ceases. Then my client can go back to focusing on what it is best at: offering award-winning spa services to thousands of happy customers every year," said Joyce.

Titanic Spa is located in an Edwardian former textile mill known as Titanic Mills, which was built in 1911, the same year as the launch of ocean liner RMS Titanic.

The Titanic famously struck an iceberg in the North Atlantic ocean and sank in April 1912.

Law firm Charles Russell Speechlys represented Titanic Liverpool.

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