Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors

Late evidence in registry proceedings should be assessed by balancing its materiality, the burden and prejudice to the opposing party, and the fairness of excluding it, including prejudice to the applicant. The appellate court reviews such discretionary decisions and intervenes for a material error of law or principle. In trade mark disputes, likelihood of confusion is assessed by comparing composite marks as wholes, having regard to their distinctive character, the similarity of services and all relevant circumstances. The own-name defence requires fair dealing with the proprietor’s legitimate interests and may succeed prospectively where effective steps prevent confusion. Passing off requires misrepresentation, not mere confusion. Injunctions and declarations remain discretionary remedies.

Property Renaissance Ltd, trading as Titanic Spa in Huddersfield, brought trade mark infringement and passing-off proceedings against operators of Titanic Hotel Liverpool. Related proceedings concerned cancellation for non-use of the defendants’ “Titanic Quarter” marks and infringement of those marks by Titanic Spa. The proceedings were heard together with an appeal from a Hearing Officer’s refusal to admit late evidence in the cancellation proceedings.

The central issues included admissibility of further evidence, the appropriate specification following genuine use, likelihood of confusion, the own-name defence under the Trade Marks Act 1994, passing off, validity and infringement of the competing marks, and declaratory relief.

1. Late evidence. The Hearing Officer had made material errors of law and principle by failing properly to assess the materiality of the further evidence, by omitting prejudice to the applicant from the balancing exercise, and by treating a significant adjournment as likely when the opposing party had not sought one. The relevant factors include materiality, the burden and fairness of admitting the evidence, irremediable prejudice to the opposing party, and prejudice to the applicant if exclusion is ordered. The further evidence should have been admitted.
2. Genuine use and specification. The further evidence established genuine use of “Titanic Quarter” for the disputed services. The 115 mark was therefore revoked only to the extent required by a fair specification, and the appeal was allowed accordingly.
3. Infringement. “Titanic Spa” and “Titanic Hotel” or “Titanic Liverpool” had visual, aural and conceptual similarities. The marks had to be assessed as composites, not by treating “Titanic” as the sole dominant element. The services were identical or highly similar, the claimant’s mark had enhanced distinctive character through use, and there was a likelihood of confusion under section 10(2) of the Trade Marks Act 1994.
4. Own-name defence. Applying section 11(2), the defendants could not rely on the defence for past use because actual confusion had occurred and the measures taken to prevent it were belated. The defence could apply to future use if the defendants placed a prominent disclaimer on their website and ceased using “spa” in connection with the hotel, thereby acting in accordance with honest commercial practices.
5. Competing registrations. “Titanic Quarter” and “Titanic Spa” conveyed materially different conceptual messages. Despite identical services and visual and aural similarity, there was no likelihood of confusion. The validity challenge failed and use of “Titanic Spa” did not infringe the Titanic Quarter registrations.
6. Passing off and declarations. Past use of the relevant hotel and spa signs involved misrepresentation and actionable damage, but the future claim failed subject to the proposed distinguishing measures. A declaration was appropriate because it served a useful commercial purpose: the defendants were entitled to use “Titanic Quarter” and the related signs for hotels in the United Kingdom.

The judgment itself describes the consolidated proceedings and the appeal from the UK Intellectual Property Office Hearing Officer’s decision dated 8 March 2016. The High Court allowed the appeal concerning admission of further evidence and determined the resulting fair specification.