FIL Ltd & Anor v Fidelis Underwriting Ld & Ors

FIDELITY was descriptive of the recognised category of fidelity insurance, so the marks were invalid for that category. The specifications could be amended by excluding it. “Financial services” ordinarily included insurance services, although its clarity and precision remained arguable. Genuine use for pension-related insurance services did not justify a broad insurance specification. Despite strong similarity between FIDELITY and FIDELIS, there was no likelihood of confusion because specialist consumers were highly knowledgeable and attentive. There was no detriment to distinctive character or unfair advantage. The passing off claim also failed.

Fidelity sued Fidelis and related companies for trade mark infringement and passing off following use of FIDELIS for specialist insurance and reinsurance services. Fidelis denied liability and counterclaimed for invalidity and revocation on grounds including descriptiveness, lack of clarity and precision, non-use and bad faith.

The court considered the meaning of the relevant specifications, genuine use, the fair specification, the relevant average consumer, likelihood of confusion, reputation, detriment and unfair advantage.

1. Validity. FIDELITY was descriptive of “fidelity insurance”, an established type of insurance. The registrations were invalid for that category. The defect could be addressed by replacing “insurance services” with “insurance services except fidelity insurance”.
2. Specifications. “Financial services” ordinarily included insurance services. The Nice Classification did not determine the meaning of the specification. It was nevertheless arguable that “financial services” lacked clarity and precision, subject to the CJEU reference in Sky plc v SkyKick UK Ltd [2018] EWHC 155 (Ch).
3. Non-use. Genuine use was established for pensions structured as unit-linked insurance policies, reinsurance of such policies, annuities and annuity brokerage. The fair specification was “pension-related insurance services”. EU925 and UK490 were revoked for the remaining insurance services.
4. Bad faith. The issue whether the later applications were made in bad faith remained arguable and awaited the outcome of the Sky plc v SkyKick UK Ltd reference.
5. Infringement. Although FIDELITY and FIDELIS were highly visually similar, the relevant consumers of Fidelis’s specialist services were highly knowledgeable, careful and attentive. There was no likelihood of confusion under Article 9(2)(b) of the Regulation or Article 10(2)(b) of the Directive.
6. Reputation. The marks had a reputation and consumers would make a link between the signs. However, Fidelis’s use caused no detriment to distinctive character and involved no unfair advantage. The claims under Article 9(2)(c) and Article 10(2)(c) failed.
7. Disposition. Fidelis had not infringed EU925 or UK598. The passing off claim was dismissed. The court was to hear counsel on the unresolved counterclaims concerning clarity and precision and bad faith.