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  • Writer's pictureRosie Burbidge

Find out why trade mark clearance is important

Updated: Jan 7, 2022

We recently reported on the Litecoin case where an application to register a trade mark was found to constitute passing off (see blog post here). Whilst cryptocurrency and celestial beings may not, at first glance, have a lot in common, a recent IPEC decision over the mark ARCHANGEL ALCHEMY raised some similar issues.

Both cases highlight the importance of clearing a new trade mark application before filing or using the trade mark.

This was a dispute between two spiritual and holistic therapists regarding the sale of metaphysical/spiritual education and coaching courses which aim to connect participants with archangels.

In this case, the judge (HHJ Melissa Clarke) rejected a claim for trade mark infringement and invalidated the trade mark registration in question, after finding that use of the mark would constitute passing off.

The claimant, Claire Stone, had obtained a registration for the ARCHANGEL ALCHEMY mark for “training course – for soul development – yogic sciences – quantum physics – altered states of awareness – relaxation – holistic health – celestial beings – natural living” in class 41 in October 2019, after launching a course under that name in July that year. She alleged that the defendant, Alexandra Wenman, infringed the trade mark by offering an online course under the same name.

However, Wenman claimed she had been using the name since around 2010 and had accrued goodwill. HHJ Clarke concluded on the evidence that Ms Wenman’s services were carried on under the signs prior to 7 September 2019 sufficient to generate goodwill at that date, and that there was misrepresentation as it was inevitable that: if someone who had been to one of the Defendant’s Courses told another person she had been to an excellent Archangel Alchemy course without providing Ms Wenman’s name, that person doing her own research might find the Claimant’s course marketed under the Trade Mark and attend it, assuming that it must be, or be connected with, the Defendant’s Course attended by the original attendee.

What happened?

The result was that the claim for infringement failed and the counterclaim for passing off succeeded. The registered trade mark was declared invalid.

To find out more about the issues raised in this case contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - #uk #iplaw #lawyer #intellectualproperty #law #trademark

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