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

The court determined claims of Community trade mark infringement and passing off brought by Och-Ziff against OCH Capital and found in favour of Och-Ziff on the principal issues. The judge analysed validity (bad faith) under Article 52(1)(b) of the Regulation and concluded the OCH trade mark was not applied for in bad faith. The court held that use by OCH Capital of signs incorporating OCH and variants infringed the OCH and OCH-ZIFF Community trade marks under Article 9(1)(b) (likelihood of confusion), and that OCH Capital’s use also amounted to passing off. The court rejected OCH Capital’s Article 12(a) defence (use of a bona fide name) because its use was not in accordance with honest commercial practices, and rejected the claim under Article 9(1)(a) in respect of isolated internal uses and the counterclaim that OCH mark was invalid. The court applied and discussed European trade mark principles including the scope of "use in the course of trade", contextual assessment of infringement, and the relevance of "initial interest confusion".

This was a first instance claim by Och-Ziff Management Europe Limited and OZ Management LP that OCH Capital LLP (with Union Investment Management Limited and Mr Thomas Ochocki) infringed Community trade marks OCH-ZIFF and OCH and committed passing off. Och-Ziff sought injunctive and declaratory relief and alleged joint liability of Union and Mr Ochocki. OCH Capital counterclaimed that the OCH mark was invalid for bad faith.

Background and parties:

• Och-Ziff is a global asset management group with established goodwill in the name Och-Ziff and at times referred to as "Och"; it owned Community trade marks for OCH-ZIFF and OCH registered in classes including Class 36 (financial services).
• OCH Capital was founded by Mr Ochocki in March 2009, used the name and logo "OCH Capital", and provided broking/financial services. Union acted as principal under an appointed representative agreement (FSMA s.39) with OCH Capital.

Procedural posture and issues: This was a Chancery Division trial (hearing 5–7 October 2010). Central issues were: validity of the OCH trade mark (bad faith under Article 52(1)(b) of the Regulation); whether OCH Capital’s various signs (including "OCH", "OCH CAPITAL", domain names, the logo and stylised forms) infringed the OCH and OCH-ZIFF Community trade marks under Articles 9(1)(a), (b) and (c); the applicability of Article 12(a) (use of name in accordance with honest practices); the doctrine of initial interest confusion; and a parallel claim in passing off. The judge also addressed disclosure and credibility issues.

Reasoning:

• Validity/bad faith: applying the Court of Justice guidance (Lindt and Cipriani authorities), the court found Och-Ziff had a legitimate interest in monopolising OCH for financial services and had honestly believed registration appropriate; the OCH application was not made in bad faith.
• Article 9(1)(a): the court held internal use of "OCH" in internal emails did not amount to use "in the course of trade" (internal communications are not use in commercial communications), so the Article 9(1)(a) claim failed in respect of that limited use.
• Article 9(1)(b): the court undertook a contextual assessment (limited to the circumstances of the specific use) and held that the addition of the non-distinctive word "CAPITAL" did not prevent a likelihood of confusion given OCH’s distinctiveness and Och-Ziff’s reputation; the court held that initial interest confusion is actionable under Article 9(1)(b) and that OCH Capital’s public uses (website, brochure, signage, domain name and logo) caused a likelihood of confusion with both OCH and OCH-ZIFF trade marks.
• Article 9(1)(c): having found infringement under (b), the court briefly considered (c) and concluded Och-Ziff could not sustain an (c) claim in relation to the OCH-ZIFF mark absent a finding of no likelihood of confusion.
• Article 12(a): the court found OCH Capital’s use was not in accordance with honest practices, listing factors such as awareness of Och-Ziff, failure to carry out trade mark searches, continuing use after complaint and the opportunistic timing, and therefore rejected the defence.
• Passing off: the three conventional elements (goodwill, misrepresentation and damage) were found satisfied; passing off succeeded.
• Liability: Union and Mr Ochocki were held jointly liable with OCH Capital on the bases explained in the judgment.

Relief and conclusions: The court found the OCH and OCH-ZIFF marks infringed under Article 9(1)(b), rejected the invalidity counterclaim and Article 12(a) defence, upheld the passing off claim, and held Union and Mr Ochocki jointly liable with OCH Capital. The judgment discusses the rarity and scope of remedies in the European trade mark context and emphasises the relevance of contextual assessment and the actionable nature of initial interest confusion under Article 9(1)(b).

First instance: the court allowed Och-Ziff's claims in part. The court held that the OCH trade mark was valid (no bad faith). Use of OCH Capital’s public signs (website, brochure, signage, domain and logo) infringed the OCH and OCH-ZIFF Community trade marks under Article 9(1)(b) (likelihood of confusion) and Och-Ziff succeeded in passing off. The defence under Article 12(a) failed because OCH Capital’s use was not in accordance with honest commercial practices. Internal uses of "OCH" in internal emails did not amount to use "in the course of trade" for Article 9(1)(a). Union and Mr Ochocki were held jointly liable with OCH Capital.