APT Training & Consultancy Ltd & Anor v Birmingham & Solihull Mental Health NHS Trust

Use of a sign by a non-profit NHS foundation trust may constitute use in the course of trade. The relevant question is whether the use forms part of commercial activity pursued with a view to economic advantage. Payment, commissioning, competition for funding and wider financial benefits may establish that context. Training provided to staff of separate NHS trusts is not internal use merely because it supports a healthcare service. Services which are integral and necessary to one another may be similar for trade mark purposes. Identical or highly similar signs used for identical or materially overlapping mental-health training and healthcare services may affect the origin function of an earlier mark and create a likelihood of confusion, including a belief in an economic connection.

The claimants provided mental-health training courses under the sign RAID and owned registered UK and EU word marks. The defendant NHS foundation trust used RAID for a psychiatric liaison service, associated training, educational materials and a professional network. The claimants alleged infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994, the corresponding provisions of the EU Trade Mark Regulation, and passing off.

The defendant accepted the marks’ reputation and the claimant’s goodwill, but disputed use in the course of trade, similarity of services, origin-function harm and confusion. The central questions were whether the defendant’s activities were internal or commercial, and whether its healthcare, training and network uses infringed the registered marks.

1. Disposition. The claim succeeded. The defendant’s uses of RAID infringed the registered marks under sections 10(1) and 10(2) of the Trade Marks Act 1994 and Articles 9(2)(a) and 9(2)(b) of the EU Trade Mark Regulation No. 2017/1001. The court did not determine section 10(3), Article 9(2)(c), or passing off.
2. Use in the course of trade. The defendant’s training and educational activities were not confined to internal use. They were provided to staff employed by separate NHS trusts, were accessible through public materials or a professional network, and formed part of services supplied under a commercial service-level agreement. The defendant received payment, competed for commissions and funding, and obtained economic advantages. Its non-profit status was not decisive.
3. Similarity and identity. Use of RAID alone was identical to the word marks. The stylised sign was not identical because the rays around the letter D would not go unnoticed, but it was highly similar. The defendant’s training services and network services were identical to the registered training and educational services. Its mental-healthcare service was similar because the training was an integral and necessary part of that service.
4. Confusion. The relevant consumer was mainly a professional healthcare provider with a high level of attention and a professional interest in mental-health care. Considering the marks and services globally, the claimant’s enhanced distinctiveness, NHS customer base, identity or high similarity of the signs, and identity or overlap between the services established a likelihood that consumers would believe the services came from, or were economically linked to, the claimants.

First-instance decision. No prior appellate decision is stated in the judgment.