Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor

For trade mark infringement under Article 9(1)(b), the court assesses the actual use of the sign in its commercial context. The assessment is not confined to confusion existing at the point of purchase. Initial interest confusion, including confusion arising from advertising which is later dispelled, may suffice where it creates a likelihood of confusion as to trade origin and is liable to damage the trade mark.

A highly distinctive element is not necessarily rendered non-infringing by adding a descriptive or non-distinctive word. The Article 12(a) defence requires use in accordance with honest commercial practices and may fail where the user knew, or should have appreciated, the risk of confusion and continued the use after objection.

The claim concerned the use of OCH Capital LLP’s name, logo, website and related signs in financial services. Och-Ziff Management Europe Ltd and OZ Management LP alleged infringement of the OCH and OCH-ZIFF Community trade marks and passing off. Union Investment Management Limited and Mr Ochocki were alleged to be jointly liable. OCH Capital counterclaimed that the OCH mark was invalid for bad faith under Article 52(1)(b).

The central issues were the validity of the OCH mark, identity and likelihood of confusion under Articles 9(1)(a) and (b), protection of the reputed OCH-ZIFF mark under Article 9(1)(c), the Article 12(a) defence, passing off, and the liability of the additional defendants.

1. Validity. The counterclaim failed. The applicant’s knowledge of potentially conflicting use did not establish bad faith. The relevant question was whether, viewed objectively, the applicant had a legitimate interest in registration and acted bona fide. The potential perception of OCH as either “Och” or an acronym did not make the application illegitimate (paras [33]-[41]).
2. Article 9(1)(a). Internal email use of OCH was not use of the sign within the meaning of the Regulation. Alternatively, it was private rather than use in the course of trade. The signs containing CAPITAL were not identical to OCH because the addition was not so insignificant that it would go unnoticed (paras [51]-[71]).
3. Article 9(1)(b). The comparison had to be made by reference to the actual context and circumstances characterising the use. Initial interest confusion was actionable. Confusion arising from promotional material could establish infringement even if dispelled before contracting and even if no sale followed. OCH was highly distinctive for financial services, while CAPITAL was descriptive or non-distinctive. The addition of CAPITAL therefore did not avoid a likelihood of confusion with OCH. The distinctive OCH element retained an independent distinctive role in OCH-ZIFF, creating a likelihood that consumers would believe the businesses were connected (paras [72]-[123]).
4. Article 9(1)(c). The alternative claim concerning OCH-ZIFF would fail on the assumption that there was no likelihood of confusion. The evidence did not establish unfair advantage, tarnishment or blurring. In particular, weakening the distinctiveness of OCH would not necessarily weaken the distinctiveness of the OCH-ZIFF combination because ZIFF also had an independent distinctive role (paras [124]-[139]).
5. Article 12(a). OCH Capital’s use was not in accordance with honest practices. Relevant cumulative factors included its awareness of Och-Ziff, failure to conduct an adequate trade mark search, continuation of the use after objection, prominent trade mark use, the foreseeable risk of confusion, and the absence of significant goodwill or compelling justification for retaining the name (paras [140]-[151]).
6. Passing off and liability. The use involved a misrepresentation causing likely damage to Och-Ziff’s goodwill. Initial confusion could be actionable even where it was dispelled before a transaction. Damage included erosion of distinctiveness and did not require direct competition or diversion of sales. Union had accepted contractual responsibility for OCH Capital’s regulated services and financial promotions under section 39 of the Financial Services and Markets Act 2000; it was therefore jointly liable. Mr Ochocki’s joint liability was conceded (paras [152]-[169]).
7. Orders. The Article 9(1)(a) claim failed. The Article 9(1)(b) claims concerning both marks succeeded. The Article 9(1)(c) claim concerning OCH-ZIFF failed on the assumed basis. The Article 12(a) defence failed. The passing-off claim succeeded, and Union and Mr Ochocki were jointly liable.