Marriott Worldwide Corporation v Delta Air Lines, Inc.

On an appeal from a trade mark Registrar, the court reviews the decision rather than rehearing the case. It should respect the Hearing Officer’s specialised experience and interfere only for error of law, principle or a conclusion no reasonable Hearing Officer could reach.

For similarity under section 5(2)(a) of the Trade Marks Act 1994, complementarity may alone establish similarity. A Hearing Officer may rely on experience when making appropriate factual findings. Under section 5(3), a link and unfair advantage require a multi-factor assessment; absence of similarity does not necessarily prevent a link. Consent under section 5(5) requires the agreement relied on to cover registration of the later mark in the relevant jurisdiction. Due cause was not established.

Marriott appealed against a decision of the Registrar’s Hearing Officer concerning Delta Air Lines’ earlier DELTA trade marks and Marriott’s UK registration for DELTA in classes 35 and 43.

The Hearing Officer maintained the registration for most services but invalidated it for specified retail and loyalty services, hotel, restaurant, bar, lounge, resort lodging and hotel reservation services. The appeal challenged findings under sections 5(2)(a) and 5(3) of the Trade Marks Act 1994, and the rejection of consent and due cause based on a trade mark coexistence agreement.

The central issues were whether the Hearing Officer had erred in assessing similarity and unfair advantage, and whether the agreement provided consent or supported due cause.

1. The appeal was dismissed. The Registrar’s decision was a reviewable decision, not an invitation to rehear the evidence. In the absence of procedural irregularity, the court would interfere only for a distinct error of law or principle, or where the conclusion was one no reasonable Hearing Officer could reach. Appropriate respect was due to the Hearing Officer’s specialist experience, consistent with Reef Trade Mark [2003] RPC 5.
2. For section 5(2)(a), the Hearing Officer applied the correct assessment of similarity, considering the nature, purpose, users and trade channels of the services and their complementarity. The approach was consistent with Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc EU:C:1998:442, British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 28, Kurt Hesse v OHIM EU:C:2016:34 and Boston Scientific Ltd v OHIM EU:T:2009:428. Following Kurt Hesse, complementarity could be the sole basis for similarity. The Hearing Officer was entitled to rely on experience when making the relevant factual assessment.
3. For section 5(3), the Hearing Officer was entitled to find a link between the earlier mark and specified hotel, lodging, reservation, retail and loyalty services. A finding of no similarity does not necessarily preclude a link, and the relevant services may be similar or dissimilar. The finding of unfair advantage was also open to her. Applying Jack Wills Limited v House of Fraser (Stores) Limited [2014] EWHC 110 (Ch), unfair advantage could arise without proof of subjective intention where consumers believed there was an economic connection or the later mark benefited from the earlier mark’s familiarity without recompense.
4. The coexistence agreement was principally directed to specified marks and services in Hong Kong and the PRC. Clauses 6 and 8 did not operate worldwide. Clause 9 dealt with cooperation in other jurisdictions, but the agreement did not provide consent to registration of Marriott’s UK mark.
5. The Hearing Officer was entitled to reject due cause. The evidence showed no relevant UK business or reputation at the relevant date and did not overcome the substantial difficulty faced by the proprietor seeking to establish due cause.
6. The court rejected the procedural unfairness challenge. The Hearing Officer had discretion to consider the consent argument under the Trade Marks Rules 2008, and the Respondent had sufficient opportunity to address the agreement.

• High Court (Intellectual Property List): appeal dismissed against the Registrar’s decision.
• UK Intellectual Property Office: Hearing Officer’s Decision No. O/081/22 maintained the mark for most services but invalidated it for specified services in classes 35 and 43.