UK: High Court examines case involving two questions referred to CJEU

June 25 2018

In FIL Ltd & Anor v Fidelis Underwriting Ltd & Ors ([2018] EWHC 1097 (Pat)), it was held that use of FIDELIS for insurance underwriting does not infringe FIDELITY for insurance or financial services. It is important to note that the validity of their registrations rests on the guidance from the CJEU in Sky v SkyKick ([2018] EWHC 943 (Ch)) in relation to two questions: "(1) whether a trade mark could be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity or precision; and (2) whether it can constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services."

Fidelity is a financial services business founded in 1969, managing around £149bn ($199 billion) in assets and owner of a portfolio of registrations for FIDELITY for, among others, "financial services" and "insurance services". Fidelity issued proceedings in December 2016 at the High Court alleging trade mark infringement and passing off. Fidelis (a specialist insurance underwriter started in 2015 which has raised $1.5bn in capital and now handles several thousand insurance contracts) counterattacked claiming that the Fidelity registrations were invalid. The Court found the following: "Fidelity" is descriptive of "insurance services" as this is a known type of insurance; there was only use of FIDELITY in relation to "insurance services" associated with pensions; "financial services" potentially lacks sufficient clarity and precision to be valid but as this relates directly to the guidance requested from the CJEU in Sky, this conclusion is provisional; the FIDELITY marks were potentially registered in bad faith for lack of intent to use but the lack of express requirement of an intention to use in EU regulations or directives may be overcome by an implicit requirement (which is subject to guidance by the CJEU in Sky); the FIDELITY marks were not registered in bad faith due to a programme of refiling to avoid non-use cancellation actions as its trade mark filings differed in territory and services covered, but again this conclusion was provisional; and the registrations were not infringed as the average consumer of the services of Fidelis is "knowledgeable" and exercises "a high degree of care and attention" and is therefore unlikely to be confused.

Until the CJEU has provided guidance in Sky, invalidity arguments about specifications lacking sufficient clarity and precision, or marks registered in bad faith will be raised regularly, increasing the likelihood of right holders settling on less favourable terms to avoid a challenge to the validity of their registrations.