Abanka DD v Abanca Corporacion Bancaria SA

Following limited proof of trade mark use, the specification must reflect the services actually used while preserving protection for immaterial variations within the same coherent category. The tribunal must identify the services used, assess whether the registered category contains independently viewed subcategories, and arrive at a fair description from the perspective of the average consumer and the purpose and intended use of the services.

Information and promotional material supplied in the course of issuing particular bonds will not necessarily constitute separate advertising or information services. A specification should not be widened to include services for which use has not been proved, nor narrowed by an arbitrary distinction such as currency where the variation is not materially different.

The appeal concerned the scope of the specifications for two international trade mark registrations after an earlier judgment found use in the United Kingdom during the relevant period in relation to issuing Euro-denominated bonds.

The appellant sought a broad specification covering advertising, information, issuing, management and other financial services. The respondent proposed the narrower wording “issuing Eurobonds”. The court had to determine the fair specification, whether the outstanding opposition should be decided by the court or remitted to the Registrar, and the appropriate costs order.

1. Fair specification. The court applied the principles summarised in Merck v Merck Sharp & Dohme [2017] EWCA Civ 1834. The tribunal must identify the services in relation to which use has been proved, consider the breadth of the registered category, identify any independently viewed subcategories, and avoid both arbitrary restriction and unjustified monopolisation of a broad category.
2. The Information Memorandum describing the bonds did not establish separate use for advertising, business information or management services. It represented use of the mark in relation to issuing the bonds. There was no sufficient evidence of United Kingdom use for guarantees or management services.
3. The appropriate subcategory was “issuing corporate bonds”. The bonds were corporate financing instruments directed principally at specialised investors. “Issuing securities” was too broad, while “issuing Eurobonds” would introduce an arbitrary currency-based limitation. A Sterling corporate bond would not be essentially different from a Euro-denominated corporate bond for this purpose.
4. The specification “Class 36: Issuing corporate bonds” was fair. The registrations stood revoked for all other services.
5. The outstanding opposition was remitted to the Registrar. The court had made no findings on similarity of marks or services or likelihood of confusion, and determining those issues itself would deprive the parties of a tier of appeal.
6. Abanca was awarded £30,000 in costs, payable within 14 days. The sum reflected its substantial success, the limited issue on which Abanka succeeded, the parties’ own costs and the need for a reasonable and proportionate summary assessment.

• High Court (Chancery Division): On appeal from the Registrar of Trade Marks, the court limited the specification to “Class 36: Issuing corporate bonds”, revoked the registrations for all other services, remitted the outstanding opposition to the Registrar and ordered Abanka to pay £30,000 costs.