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Sunday, 29 October 2017

Trade mark use dispute? You can ABANKA on it

Some banking services carry an element of risk
Abanka DD v Abanca Corporacion Bancaria SA [2017] EWHC 2428 is a recent High Court appeal from the UK's Intellectual Property Office.  It concerns the revocation of two international trade marks for ABANKA and the related opposition to the application to register ABANCA - no prizes for guessing which party was attacking which mark.

This case is interesting for its discussion of the issues surrounding use of a mark where there are some customers in one jurisdiction but the services are effectively offered in another jurisdiction.

Background

Abanka is a Slovenian bank which since March 2006 has had two UK trade marks for ABANKA for a very wide range of financial services.  The Hearing Officer held that no use had been proved in the relevant period so the marks were revoked and, consequently, the opposition was dismissed.

Although there clearly had been some use of the marks, this was one of the scenarios where it is slightly less straightforward to determine whether that use occurred in a particular territory (i.e. the UK) and if so whether that use was sufficiently substantial.

Where is the use?

Abanka is a Slovenian bank which does not hold a UK banking licence so its activities were inevitably somewhat restricted - mostly to serving the Slovenian immigrant community. The main evidence relied on consisted of:
  • advanced payment guarantees
  • cheques
  • 80 debit and credit card holders who used their cards in the UK over a six year period
  • use on the website
  • a press release about a banking award by a UK magazine
  • a flotation on the London Stock Exchange to raise funds for the bank
Although many of the services listed above might be fulfilled in the UK, Daniel Alexander QC, sitting as a Deputy Judge in the High Court,  distinguished between use of the mark Abanka to an undertaking in the UK as compared to use of the mark ABANKA by Abanka in the UK.  In other words, the use of the trade mark by Abanka is in Slovernia to the customer who is offered the advance payment guarantee, credit/debit card or cheques services.  Although some Slovenian customers who are resident in the UK were supplied with credit/debit cards it was not clear how many of the cards had been provided as a Slovenian banking service even if they were delivered to a UK address and subsequently used in the UK.

The Abanka website was in English but this was not sufficient to establish an intention to establish commercial relations with English customers.  The fact that a website is in English is not by itself sufficient to show that it targets the UK.  In particular, there was no "reliable material" to show comparative access of the website from the UK or elsewhere and although it had been accessed in the UK, this was not sufficient to establish that the website targeted the UK market. The fact that Abanka did not have a UK banking licence and therefore could not provide banking services in the UK was relevant but not conclusive.

A press release for an award from a UK magazine was given short shrift.  The award was for listing Abanka's shares on the Ljubljana stock exchange in 2008.  As the judge put it, "it is difficult to see how being the passive recipient of an award which was largely conferred for successfully recapitalising itself in Slovenia ... assists Abanka in showing use of the mark in the UK...".

Abanka's best hope came from Abanka's application for admission to the London Stock Exchange.  Although the purpose of the listing may have been to raise funds for Abanka itself, the bonds could be treated as analogous to goods or services (even if they may be technically categorised as a chose in action).  When deciding whether to purchase Abanka's bonds from the LSE, its reputation was clearly important.  The judge therefore overturned the hearing officer's decision on this point and held that the bonds were sufficient use in the UK.  Although over £1million in bonds is small in the grad scheme of bonds the sales plus the marketing was sufficient to establish genuine use.

Pushed vs pulled

Whether there was use came down to whether there were active or passive sales.  Put another way, had Abanka pushed its business and trade mark into the UK or been pulled into the UK by customers who happened to be in the UK.

Parallel decisions in France, Spain and Switzerland reached broadly the same conclusion (apart from on the bonds issue which was only relevant to the UK).  The "core message" of these decisions was the same as the UK decision.

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