Plane users cannot tell airlines from airways, rules court

United Kingdom
In United Airlines Inc v United Airways Bangladesh Limited (June 24 2011), the Chancery Division of the High Court of England and Wales has granted summary judgment to United Airlines Inc, the well-known US airline, against United Airways Bangladesh Limited.

United Airlines argued that United Airways was passing off and infringing its UNITED and UNITED AIRLINES marks by employing the abbreviated term ‘United Airways’, in either English or Bengali script, on its seven-aircraft fleet in flights between Dhaka and London.

United Airlines sought summary judgment, alleging infringement under:
  • Section 10(1) of the Trademarks Act 1994 (identical mark/ identical services);
  • Section 10(2) (similar mark/identical services); and
  • Section 10(3) (United Airways was taking unfair advantage of its reputed marks without due cause, thereby diluting them). 
In response, United Airways stated that:
  • the marks did not look alike; 
  • the airlines were different, flew different routes and had different point-of-sale outlets; and
  • consumers would not be confused and, in any event, could do their own research if they wanted to check whether there was a link between the companies.
The court granted United Airlines' application for injunctive relief on the basis that there was no way that any defence to the action could succeed. In its view, it was obvious that the parties' respective marks were not truly identical. However, it had to be asked whether, on a global appreciation, the differences were so insignificant that they might go unnoticed by the average consumer - this being a question of fact. ‘Airlines’ and ‘airways’ were not synonymous but, when looked at from the point of view of an average consumer, they effectively conveyed the same meaning. The average consumer, being unconcerned with corporate identity, would be as likely as not to consider that the Bangladeshi operation was United Airlines' subsidiary. Accordingly, viewed as a whole, the differences between the signs were so insignificant that they would go unnoticed by the average consumer and, therefore, the two marks were sufficiently identical for an action under Section 10(1) of the act to succeed. The fact that airlines fly different routes did not make them different services for trademark purposes.

Regarding the claim under Section 10(2) of the act, evidence of actual confusion was not conclusive, and rarely significant. The average consumers were likely to be confused if, lacking intimate knowledge as to the difference between ‘airlines’ and ‘airways’, they relied on the imperfect picture that they had of the marks and signs in their mind. The same would apply if the average consumers reached the Bangladeshi airway's website.

Further, United Airways could not argue that it was merely using its own name - it had picked a name that had been well established for decades and offered no reason why it should have chosen it. Its conduct was thus unfair and was caught by the unfair advantage provisions of Section 10(3).

United Airlines' argument based on passing off was also irresistible. Goodwill in the company's marks was established on the evidence, as was the fact that members of the public would believe, on the basis of the similarity, that the Bangladeshi business was connected with the US one. The argument that the public could carry out research and discover that there was no link between the parties had to fail - had it succeeded, this would have spelt the end for the tort of passing off, since it would succeed on every occasion.

Jeremy Phillips, IP consultant to Olswang LLP, London

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