Jane Lambert
Business and Property Courts of England and Wales (Mr Ian Karet) Marriott Worldwide Corporation v Delta Air Lines, Inc. [2023] EWHC 283 (Ch) (10 Feb 2023
In Re DELTA, Delta Air Lines, Inc, v Marriott Worldwide Corporation O/081/22 31 Jan 2022, Marriutt Worldwide Corporation ("Marriott") successfully resisted an application by Delta Air Lines Inc ("Delta") for a declaration of invalidity in respect of trade mark number 3108603 for all the classes for which the mark DELTA was registered pursuant to s.47 (2) and s.5 (2), (3) and (4) of the Trade Marks Act 1994. The only services for which the application succeeded were:
"Retail stores services all connected with the sale of articles and equipment for household purposes, namely clothing, footwear, headgear, toiletries, cosmetics, optical goods, toys, plush toys, games, stationery, printed matter, umbrellas, luggage, jewelry (sic), watches, foodstuffs, drinks, wines; customer loyalty services" in class 35, and
"Hotel services; restaurant, bar and lounge services; resort lodging services; reservations services for hotel accommodations" in class 42.
Because Marriott had the better of the argument, the hearing officer awarded it £2,300 in costs.
Even though it had prevailed on most of the issues, Marriott appealed against the invalidation in respect of the above-mentioned services in classes 35 and 42. The appeal came on before Ian Karet sitting as a judge of the High Court on 14 Dec 2022. By para [82] of his judgment in
Marriott Worldwide Corporation v Delta Air Lines, Inc. [2023] EWHC 283 (Ch) which he delivered on 10 Feb 2023, Mr Karet dismissed the appeal.
In the proceedings before the hearing officer, Delta had relied on the registration of DELTA for air transportation services under
EU trade mark 132290. The hearing officer had found some similarity between "air transportation services" and
"hotel services; resort lodgings; reservations for hotel accommodations" albeit at a low level. Marriott attacked that finding as "based solely on a finding of complementarity." The services might be supplied through the same channels but that did not mean that consumers regarded them as complementary.
Mr Karet held that the hearing officer had not made any error in principle in her approach and her decision on similarity for the purposes of s.5 (2) (a) was one that she was entitled to make. There may not have been any evidence before her but she was entitled to take judicial notice of the fact that airline passengers often stay at hotels.
As to s.5 (3), Marriott complained that the hearing officer had not established a link or either unfair advantage or detriment to the distinctive character of the mark. Once again, the deputy judge found that the hearing officer had been entitled to come to the conclusion that she had reached. Her finding of similarity between hotel and air transport services for the purposes of s.5 (2) was sufficient for a link. She had identified unfairness as resulting from a consumer's belief that the purchased services were those of another supplier.
At the hearing below, Marriott relied on s.5 (5) on the basis of an agreement with Delta for the continued use of the DELTA mark in China and Hong Kong after Marriott had acquired the Delta Resorts brand. The hotels were located in China and Hong Kong and the agreement was governed by Hong Kong law. The hearing officer held that the agreement was for the coexistence of the brands in Hong Kong and China and that it did not apply outside those countries Marriott contended that the agreement contained no such limitation.
The deputy judge reviewed the agreement and found that the hearing officer had been entitled to conclude that any consent under that the agreement had been limited to Hong Kong and China. Furthermore, there was nothing in the agreement that would amount to consent to the registration of the DELTA mark for any services in the UK.
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