GLENEAGLES Case proceeds to trial

Lord Nimmo Smith has issued an opinion in Gleneagles Hotels v Quillco 100 Limited, allowing the case to proceed to trial. Nimmo Smith was satisfied that Gleneagles Hotels has a legitimate case of trademark infringement and passing off.

Gleneagles Hotels runs a prestigious hotel and associated facilities - including golf courses and time-share accommodation - in Scotland. It has registered the GLENEAGLES trademark for use in relation to golf and accommodation services. The mark is usually used in conjunction with an eagle with outstretched wings surmounting a set of antlers. Quillco 100 Limited used the phrase 'gleneagles' in combination with an eagle device (head alone) in relation to the development of a five-star hotel and other accommodation, a golf course and a film studio promoted under the name 'Gleneagles Film Studios'. Gleneagles Hotels brought infringement claims under Sections 10(2) and 10(3) of the Trademarks Act 1994, as well as an action for passing off.

In his opinion, Nimmo Smith concurred with all three of Gleneagles Hotels' claims, even though in the meantime Quillco had agreed to limit its use of 'gleneagles' to the film studios. Firstly, Nimmo Smith found that Quillco's use of the mark infringes Gleneagles Hotels' rights under Section 10(3) because (i) such use is without due cause, and (ii) either takes unfair advantage of, or is detrimental to the distinctive character or the repute of Gleneagles Hotels' mark.

Secondly, Nimmo Smith found infringement under Section 10(2) because, even though the film studios are not in direct competition with Gleneagles Hotels, they (i) are only a few miles from the Gleneagles Hotels' complex, and (ii) are used in association with Quillco's hotel and golf operations.

Lastly, Nimmo Smith found that Quillco's use of the mark amounted to passing off, regardless of whether or not the parties have a common field of business, because it "deliberately [sought] to attract the attention of the public by borrowing [Gleneagles Hotels'] name and its associated goodwill". This is in line with the decision in Walter v Ashton ([1902] 2 Ch 282), which established that evidence of deceit removes the need to establish damage, normally so critical to successful claims of passing off.

Justin Hubble, Ashurst Morris Crisp, London