HSBC fails to keep Hamilton trademark alive
HSBC has failed in its attempt to keep its ‘Hamilton’ trademark alive, after facing off against insurance company Hamilton Insurance.
The UK Intellectual Property Office (UKIPO) revoked the mark, UK number 1,422,495, on Friday, February 2.
Registered in 1992, the ‘Hamilton’ trademark covered services in class 36, including insurance and investment and pension services.
In April 2011, Hamilton Insurance contacted HSBC about the revocation of the trademark on the ground of non-use. Hamilton Insurance then sought revocation of the mark at the UKIPO.
HSBC filed a counterstatement, arguing that it has used the trademark in relation to the relevant services within the five year period (April 2011 to April 2016).
Donald Wood, a senior product manager at HSBC, provided a witness statement as evidence supporting the use of the mark.
He said that the ‘Hamilton’ trademark was being used as a trading name by HFC Bank, part of HSBC, but that the trademark was transferred in 2013 to HSBC when HFC shut down.
“Customers of HFC Bank holding certain loan products knew it as ‘Hamilton or ‘Hamilton Direct Bank’,” said the witness statement.
HSBC also provided a letter that had allegedly been sent to customers of HFC Bank, noting that the HFC’s business and accounts were being transferred to HSBC.
Although the letter mentioned loan repayments, it did not mention any of the other services covered under the ‘Hamilton’ trademark.
Hamilton criticised the evidence, claiming that if the trademark was being used for financial services, “it would not be unrealistic to expect there to be evidence to support the same”.
The UKIPO agreed with Hamilton, finding that Wood should have been well-placed to provide “more detailed and persuasive evidence” and that there were information deficiencies within the evidence provided by HSBC.
“In my view HSBC have failed to discharge the burden placed on them to provide evidence of genuine use,” said June Ralph, on behalf of the UKIPO.
The UKIPO revoked HSBC’s trademark and ordered the bank to pay £900 ($1,251) of damages to Hamilton.
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