Stichting BDO & Ors v BDO Unibank, Inc & Ors

A trade mark specification receives its natural and usual meaning, confined to the core of general wording. Genuine use preserves protection only for a fair and coherent category exemplified by the use proved.

An overseas advertisement uses a sign within the European Union when its objective effect shows that it targets consumers there. Accessibility or European circulation alone is insufficient.

Likelihood of confusion requires a global assessment. A defendant’s reputation among its own customers is immaterial unless the relevant consumers would know of it. Dilution requires actual injury or a serious likelihood of injury, normally evidenced by changed economic behaviour.

A company may invoke the own-name defence for a trading name, provided its use accords with honest commercial practices.

The proprietor and licensees of the Community trade mark BDO sued a Philippine bank and four United Kingdom remittance providers. They alleged infringement through advertisements for banking services and use of BDO Remit for money-transfer services.

The defendants denied infringement. They counterclaimed for partial invalidity based on an allegedly unclear specification and, alternatively, partial revocation for non-use. The invalidity counterclaim was abandoned after trial.

The court had to determine the fair specification supported by genuine use, whether the advertisements targeted European Union consumers, whether BDO Remit caused confusion or dilution, and whether the bank could rely on the own-name defence under article 12(a) of Council Regulation 207/2009/EC.

1. Partial invalidity. The defendants were right to abandon this counterclaim. Lack of clarity or precision in a specification was an examination issue, not a ground of invalidity under articles 4, 7(1)(a), 52(1)(a) and 100(1) of Council Regulation 207/2009/EC. Article 4 concerns whether the subject matter is a sign capable of graphical representation and of distinguishing goods or services. It does not require clarity in the particular list of goods or services. An amended post-registration specification must, however, be clear and precise.

2. Partial revocation. The counterclaim succeeded in part. Genuine use had to be identified first. The court then had to frame a fair specification reflecting the categories that the proved services realistically exemplified, viewed through the average consumer’s perception. Broad descriptions could not be maintained merely because isolated subcategories fell within them. The specification was narrowed in several respects, debt-collection services were deleted, and arbitration and mediation was restricted to mediation, all with effect from 10 December 2007.

3. Advertisements. Whether an overseas advertisement used a sign within the European Union depended on its objective targeting effect. The publication’s nature and circulation, the services advertised, territorial references and contact information were relevant. Three advertisements targeted European Union consumers and were prima facie infringements under article 9(1)(a); the remainder were not.

4. BDO Remit. The sign was highly similar to the mark, but the remittance services had only a low degree of similarity to the registered professional services. The average consumer exercised reasonably high attention. The context was directed to a specialist Filipino remittance market, and eight years of parallel use had produced no material evidence of confusion. There was therefore no likelihood of confusion under article 9(1)(b).

5. The sign called the reputed mark to mind, but article 9(1)(c) required evidence of actual and present injury or a serious future likelihood of injury. There was no evidence of changed consumer behaviour. The small-scale niche use did not dilute the mark.

6. Own name. BDO was the bank’s trading name at the relevant dates. Considering honest commercial practices and the surrounding circumstances, the three prima facie infringements did not amount to unfair competition. The article 12(a) defence succeeded. The infringement claims therefore failed.

not stated in the judgment.