Thomson cruises to victory in FREESTYLE dispute

United Kingdom

In Thomson Holidays v Norwegian Cruise Line, the Court of Appeal has issued guidance on how to revise a trademark registration. The court held that specifications in a trademark registration may be amended so that the registration covers customers' perceived uses of the mark.

In 1986 Thomson registered the trademark FREESTYLE in relation to, among other things, the "arrangement and booking of travel, tours and cruises." It brought a trademark infringement action against Norwegian for its use of the term 'freestyle' in its marketing of cruise ship holidays. Norwegian denied infringement, arguing a defence of non-use. It contended that the FREESTYLE mark was invalid in relation to cruises as Thomson had never used the mark for that type of holiday.

The court at first instance agreed with Norwegian. However, to prevent revocation of the mark as a whole, the court deleted the word 'cruises' from the specifications in the trademark registration and concluded that Norwegian's use of 'freestyle' did not infringe the revised version. Thomson appealed.

Thomson accepted that it had not used FREESTYLE for cruises, but it argued that the approach taken by the first instance court was too limiting because 'use' should refer to what consumers consider to be the actual uses made by the mark owner. Thomson further contended that consumers understand the uses of the mark to cover all package holidays, including cruises.

The appellate court held that the generic term 'package holidays' is an appropriate indicator of the mark's use. It rejected the lower court's deletion of the word 'cruises' and revised the specifications to include any service related to package holidays. The court reasoned that because these new specifications include cruises, Norwegian had infringed Thomson's mark.

Ian Starr, Ashurst Morris Crisp, London

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