Trade Marks: APT Training and Consultancy Ltd. and another v Birmingham & Solihull Mental Health NHS Trust

Queen Elizabeth Hospital, Birmingham

Author Tony Hisgett

Licence Creative Commons Attribution-Share Alike 2.0 Generic
Source Wikipedia, Birmingham

Jane Lambert

Intellectual Property Enterprise Court (Her Honour Judge Melissa Clarke) APT Training and Consultancy Ltd and another v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) 9 Jan 2019

This was a very interesting case for two reasons.  First, the claim was for the infringement of the claimant's British and European Union trade marks for educational services, training, seminars and the like relating to psychology by providing mental health care in its hospitals and training in its use under an acronym that was the same as those registered marks. Secondly, the trial of the action took place outside London the first time in the history of the Intellectual Property Enterprise Court ("IPEC").

The Parties
The claimants were APT Training & Consultancy Ltd. and its founder, Dr William Davies.  Dr Davies had developed a training course for tackling challenging behaviour at source as explained by the YouTube video Challenging Behaviour Training | RAID®. According to Her Honour Judge Melissa Clarke who tried the action, the sign RAID is an acronym for 'Reinforce Appropriate, Implode Destructive', which is the underlying message of training courses that it provides in a positive behaviour support approach for tackling challenging behaviour at source. The defendant was an NHS foundation trust that provides mental health care to people living in Birmingham and Solihull at the Queen Elizabeth Hospital and elsewhere.  One of its services is the 'Rapid Assessment Interface and Discharge' of patients which is abbreviated to "RAID".

The Trade Marks
Dr Davies had registered the initials "RAID" as British and European Union trade marks.  The British registration was for

"Educational services; provision of training; conferences; seminars; teaching; tuition; correspondence courses; all relating to psychology, behavioural problems, business and commerce; all included in Class 41."

That mark had been registered for those services with effect from 15 Oct 1992 under trade mark number UK00001515793.  The EU registration was for

"Printed matter and publications; books; manuals; leaflets; instructional and teaching materials; pamphlets; brochures; stationery; none concerning bastions or gabions" in class 16; and

"Educational and training services including educational and training services relating to psychology, mental health, behavioural problems, learning disabilities, substance misuse; teaching; tuition; provision of education and training via the Internet; computer based educational services and training; design and development of educational and training programs; arranging and conducting of conferences, lectures, seminars, presentations, workshops, classes and courses; correspondence courses; publication of correspondence courses; providing facilities for educational purposes; publication of educational materials; information, consultancy and advisory services in relation to all of the aforesaid services; none concerning bastions or gabions" in class 41,

The EU mark had been registered with effect from 25 Aug 2009 under trade mark number EU008509242,

The Dispute
Dr Davies discovered the defendant's service by making an internet search for "RAID in mental health." He had been prompted to do so by a telephone enquiry from a member of the public who wanted to discuss RAID training for her organization. She said that she had read about RAID courses on the web but those that she described appeared to be different from those offered by his company. His search led him to believe that "the Defendant was providing mental health services under the sign RAID and promoting these widely"  It appeared to him that the Trust was providing training under the RAID sign but of shorter duration and at a lower level.

Dr Davies instructed solicitors to complain to the Trust over its use of the sign.  The Trust replied:

"Acute hospital staff also received training on mental health awareness and interventions. Acute staff reported this training was highly relevant and led to improvements in their practice and ultimately patient experience and safety."

The judge found that that training was provided only as a necessary support to the defendant's main function of providing psychiatric liaison services to each of the Birmingham Hospital.  However, it was also quite extensive. The judge was shown several presentations that had been given to clinicians.

The Claim

The claimants claimed that the defendant's care under the abbreviation "RAID" infringed Dr Davies's trade marks and amounted to passing off. The trial judge noted at paragraph [16] of her judgment that Dr Davies has expressed his admiration for the work that the defendant NHS Trust was doing and made clear that the claimants had no desire to prevent that work continuing. They just wished it to continue under another name.  The defendant admitted that they had offered care by reference to the abbreviation but denied that that amounted to trade mark infringement or passing off.

The Issues

At a case management conference on 31 Jan 2018, Judge Hacon ordered the following issues to be tried:

"i) Is the Defendant's Sign identical or similar to the Registered Trade Marks?
ii) Has the Defendant used the Defendant's Sign in the course of trade in relation to education and training services relating to health and related printed matter?
iii) Are the goods/services provided by the Defendant under the Defendant's Sign identical, and/or similar to the goods/services specified in the Registered Trade Marks?
iv) Who is the relevant public / average consumer?
v) Is the Defendant's use of the Defendant's Sign liable to affect the origin function of the Registered Trade Marks?
vi) Is there a likelihood of confusion between the Registered Trade Marks and the Defendant's Sign?
vii) Do the Registered Trade Marks have a reputation within section 10(3) of TMA /Article 9(2)(c) EUTMR? [This is no longer in dispute as the Defendant accepts that it does]
viii) Is the Defendant's use of the Defendant's Sign detrimental to the distinctive character and/or repute of the Registered Trade Marks?

Passing off

ix) Does the First Claimant own goodwill in the RAID Mark? [This is no longer in dispute as the Defendant accepts that it does]
x) Does the Defendant's use of the Defendant's Sign amount to a misrepresentation to the public?
xi) Have such misrepresentations caused damage to the First Claimant?"

Issue (i) – Is the Defendant's Sign identical or similar to the Registered Trade Marks?

The judge referred to paragraph [54] of the judgment of the Court of Justice of the European Union ("CJEU") in Case C-291/00, LTJ Diffusion SA v Sadas Vertbaudet SA, [2003] EUECJ C-291/00, [2003] FSR 34, [2003] ECR I-2799, [2003] CEC 283, [2003] ETMR 83:

"…a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer."

She directed herself to consider whether the marks are similar or identical by comparing the overall impression created by them, including their visual, aural and conceptual similarities having regard to Case C-342/97) Lloyd Schuhfabrik Meyer & Co GmbH v Klijesn Handel BV.  

The defendant trust had used the RAID sign simpliciter in its correspondence, emails and website and also in the following form:

Her Honour found that the sign, when used simpliciter, was identical to the registered marks and that the stylized sign was highly similar but not identical.

Issue (ii) – Has the Defendant used the Defendant's Sign in the course of trade in relation to education and training services relating to health and related printed matter?

The learned judge found that use of a trade mark in the course of informal and ad hoc training which is otherwise than internal, to be "use" for the purposes of infringement.  In this case, the Mental Health NHS Trust had been offering its care services with concomitant training to anyone in the NHS and not just hospitals in Birmingham. Accordingly, such "use" was not just internal.  As care had been provided pursuant to a service level agreement it was also commercial. For all those reasons, she was satisfied that the defendant's use of its sign in relation to educational and training services and related materials was "use" for the purposes of trade mark infringement and that such use was use "in the course of trade".

Issue (iii) – Are the goods/services provided by the Defendant under the Defendant's Sign identical and/or similar to the goods/services specified in the Registered Trade Marks?

As it had been conceded that the defendant's services in relation to training services and related materials were identical to the claimant's, Judge Melissa Clarke found that the defendant had infringed the British mark pursuant to s.10 (1) of the Trade Marks Act 1994 and the EU mark pursuant to art 9 (2) (a) of The EU Trade Mark Regulation (Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (Text with EEA relevance. ) OJ L 154, 16.6.2017, p. 1–99. She also found that the supply of those services in relation to users of the defendant's services known as the "RAID network" also amounted to infringement under s.10 (1) and art 9 (2) (a).  The defendant's other services appeared to the judge to be similar to the services for which the mark was registered.  Whether or not they infringed would depend on whether there existed a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade marks,  The likelihood of confusion had to be considered from the point of view of the "average consumer" of the goods and services concerned.   That led her to the next issue.

Issue (iv) – who is the average consumer?

Judge Melissa Clarke found the average consumer to be "a consumer of mental health-related educational and training services and instructional and teaching materials".  She found such a person to be:

"i) is a construct from a spectrum of mainly, but not exclusively, professional healthcare providers with different job roles at all levels, and different working experiences and working environments, but each with a professional interest in mental health care. The spectrum will include nurses, support workers, medical professionals, psychologists and healthcare assistants, with a professional interest in forensic or liaison psychiatry, working in a variety of different healthcare, residential, secure and community settings. Those who are not professional are likely to be in mental health caring roles;
ii) may be male or female and is of working age;
iii) will exercise an high attention to detail."

Issue (v) – Is the Defendant's use of the Defendant's Sign liable to affect the origin function of the Registered Trade Marks?

In the absence of any reasoned denial, the judge accepted the claimant's submission that the defendant's use of its sign in both plain and stylized forms was intended to distinguish its services from those of other suppliers and that by so doing it affected the origin function of the registered marks.

Issue (vi) – Is there a likelihood of confusion between the Registered Trade Marks and the Defendant's Sign?

As there was not much evidence of actual  confusion, Her Honour considered the following factors:

"i) Although the Registered Trade Marks are not particularly distinctive in their own right (although they are not descriptive of the services that they cover), the First Claimant has been providing training courses in mental health under the 'RAID' mark for thirty years. The evidence before me, which includes extensive positive reviews and Dr Davies' evidence of the popularity of the RAID Courses and number of people trained over the years, satisfies me on the balance of probabilities that they have acquired enhanced distinctiveness through such use;
ii) I have accepted Dr Davies' evidence that the NHS is one of the First Claimant's biggest customers, that the First Claimant has provided RAID Courses to numerous NHS Trusts, (although not the Defendant), and that it has provided some 30 other training courses to the Defendant. The average consumer who is likely to be a professional and may be an employee of the NHS is likely to be aware that the NHS uses private training providers like the First Claimant, and so may believe that there is a commercial relationship between the Claimants and the Defendant as a result of the Defendant's use of the Defendant's Sign.
iii) Per Specsavers ...paragraph 52(g)), a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. As I have found, the Defendant's Sign in stylised form is highly similar to the Registered Trade Marks and used on identical services. I have also found that Defendant's mental health care services have significant similarities with the services the subject of the Registered Trade Marks, and the Defendant's Sign simpliciter used in relation to those mental health care services has identity with the Registered Trade Marks;
iv) Although the average consumer displays a higher than average level of attention to detail, because of the close similarity of services and marks as described above, there are few details or differences for the average consumer to notice."

Taking all those factors into account. the judge was satisfied that there was a likelihood of confusion on a balance of probabilities.   She considered that "the Defendant's use of:
i) the Defendant's Sign simpliciter in relation to the mental healthcare element of the D's RAID Service; and
ii) Use of the Defendant's Sign in stylised form in relation to the Defendant's training services and related materials, the RAID Network and the mental healthcare element of the D's RAID Service;
would cause the average consumer to believe that they come from the Claimants or that they are economically linked to the Claimants"

Accordingly, she found the defendant's use of its sign in each of those ways infringed the marks pursuant to s. 10 (2) of the Act and art  9 (2) (b) of the Regulation.

As the claim succeeded on s.10 (1) and (2) and art 9 (2) (a) and (b) the learned judge did not need to consider s.10 (3), art  9 (2) (c) or passing off,

Trials outside London

Noting that paragraph 1.5 of the IPEC Court Guide of July 2016 makes clear that the judges of IPEC are able and willing to sit outside London if the parties wish it and inform the court in good time for arrangements to be made, Judge Melissa Clarke, wondered why it had taken so long for such a trial to take place outside the capital.  She hoped that the APT trial would be the first of many outside London.  Paragraph 4 of the Patents Court Guide contains a similar provision but to the best of my knowledge and belief Hadley Industries Plc v. Metal Sections Limited, Metsec (UK) Limited [1998] EWHC Patents 284 (13 Nov1998) is the only case that the Patent Court has tried outside London. That trial also took place in Birmingham,

I have applied for a trial outside London many times and have even obtained orders to that effect but the parties have either settled or something has drawn the parties back to London. One reason why there have not been more trials outside London is that many litigators and often their clients relish the prospect of a few days in the capital.  Most big cities are busy enough with their own work and court administrators are reluctant to release courts for a case that could be tried elsewhere.  Rail fares and hotels in central London may be expensive but their cost is chicken feed compared to the other expenses of litigation.   

Comment

This is a careful and well-reasoned judgment on trade marks in relation to public sector services. It is an issue that does not arise very often.  Judge Melissa Clarke's judgment contains a useful analysis on Och-Ziff Management Europe Ltd and another v Och Capital LLP and others : [2011] ECC 5, [2010] EWHC 2599 (Ch), [2011] FSR 11, [2011] Bus LR 632, [2011] ETMR 1 and Joined Cases C-236-238/08 Google France SARL v Louis Vuitton Malletier SA  [2010] EUECJ C-236/08, [2010] ETMR 30, [2010] ECR I-2417, [2010] RPC 19, [2011] All ER (EC) 411, 3 ALR Int'l 867, [2011] Bus LR 1 on what constitutes use of a trade mark.  Anyone wishing to discuss this article or trade marks, in general, should call me on 020 7404 5252 or send me a message through my message form.