Hotels and leisure venues are often very keen to protect their trade marks widely to cover items provided in-room or within venue, whether those are provided on a completely complimentary basis (such as the amenity products, napkins, stationery and the like) or on a reimbursed basis (such as umbrellas, bathrobes and slippers). They are also keen to protect the ancillary services, such as ticket booking and chauffeur services. Issues arise, however, when it comes to enforcing some of these trade marks due to the requirement to prove use of older trade mark registrations. This has recently been put under the spotlight in the UK by a case brought by Claridges Hotel’s case against Claridge Candles Limited, an artisan candle company*.
What can you register as a trade mark?
In theory it is open to leisure venues to register their mark across all types of products and services, subject to a requirement in some countries of the world that the owner has an intent to use the mark (either directly or with their consent, such as via licensees). The protection against the trade mark registers becoming completely clogged up with unused trade marks is the ability for third parties to apply to cancel registrations for non-use if the registration has not been used for the full list of products and services (or any of them) for a particular period of time. In the UK and EU this period is 5 years from registration.
What do you need to do to keep the trade mark?
The owner of the trade mark needs to show that they have used their trade mark for the products or services for which they have it registered, and that the use which has been made of it is enough to create or maintain a market for those products or services.
What problems arise for hotels and leisure companies?
The particular problem for hotels and leisure venues is that they provide a large number of items to attract and delight their visitors, including toiletries (in the case of hotels) and merchandise, together with items such as publications; they and might also offer services such as concierge services as part of the overall offering to visitors.
They certainly would be unhappy if a third party adopted the same or a similar mark for these connected products or services, so might register trade marks for those products and services to try to stop others from moving into those areas, but might struggle to prove that they have used the registrations so find themselves in a vulnerable position.
What did the Claridge’s case find?
Claridge’s brought a claim against the use of the mark CLARIDGE on candles based upon their registrations, which covered a large amount of items including clothing, aprons, toiletries, fragrances, ticket booking services, management of hotels and stationery. When they were challenged to prove use of their trade mark registrations, they cancelled their protection for some of the products but argued that their own-brand toiletries classed as “use” of the trade mark and that the registration should be permitted to remain for those products.
The Court disagreed, concluding that the toiletries were there simply to promote the hotel services or were ancillary to the hotel services, so could not be classed as “used” as a trade mark for toiletries. Equally, the use on the hotel’s publications was not use on “printed publications” as it was not to create a separate trade in magazines.
What should hotels and leisure venues do as a result?
The key step is to review your portfolio of trade marks, and consider very carefully whether the rights which you have are sufficient (and fortify them if need be). For new leisure brands there is the initial period when a registration cannot be challenged, which means you may be able to rely on a broader registration, but for older businesses there may be some vulnerability in the portfolio. This is something to be considered as part of an Intellectual Property Strategy Review.
Equally, it is important for businesses to keep good records so that if a challenge is brought, they will be able to prove that there has been use of the mark. This may not always be straightforward, and there are occasions when brand owners have lost marks because the evidence was not prepared as well as it could be. For example, a few years ago Gucci nearly lost some of its UK trade marks because the evidence it filed of the use of its logo was not sufficiently detailed. A review of the evidence being held may be advisable so that if the time ever comes, it will be more straightforward to defend the registrations.
For well-established and successful businesses, they should be reassured that protection for their core business may be enough to protect against third parties. For example, in the CLARIDGE’S case the Court decided that the use of CLARIDGE on candles would take unfair advantage of Claridge’s reputation in hotels. Again, this should be reviewed regularly as part of the strategy of the business to ensure that the business has the rights it needs to combat any issues that might arise, and to plan a strategy to fill the gaps.