English IP court finds no trade mark infringement in dispute between “archangel” holistic therapists
The English Intellectual Property Enterprise Court has rejected a claim for trade mark infringement by a self-described “spiritual and holistic therapist” who claimed that another holistic therapist had been using her mark to market online courses and upheld a counterclaim of passing off.
Claire Stone, the registered proprietor of the work mark “Archangel Alchemy” and author of a best-selling book titled “The Female Archangels”, claimed that the defendant, Alexandra Wenman, had infringed her trade mark by providing identical services under the same name. A counterclaim for passing off was submitted by the defendant, who also sought a declaration of invalidity in respect of the claimant’s trade mark.
The case was heard by Judge Melissa Clarke, sitting as a judge of the High Court. Mr Ben Longstaff appeared for the claimant and Mr Christopher Hall for the defendant.
In 2019 the claimant, who had been providing spiritual coaching and education services for over 20 years, began marketing an online “metaphysical education” course under the trade marked brand, consisting of both pre-recorded and live online classes. The registered mark covered, among other things, training courses for soul development, yogic sciences, and “celestial beings”.
The claimant first became aware of the purported infringement in February 2020, when she discovered that the defendant had been marketing her own online course by reference to the sign “Archangel Alchemy” on her website and social media accounts. She claimed that the defendant’s use of the mark in relation to services identical to her own constituted an infringement or, in the event that their services were merely similar, that there was a real chance of confusion on the part of the public.
The defendant’s case was that she had offered spiritual and holistic education under the signs “The Archangel Alchemist” and “Archangel Alchemy” since 2010 and had accrued goodwill in relation to these signs, including writing a series of articles under that name for Prediction Magazine between 2010 and 2013. She challenged the claimant’s mark on the grounds of invalidity, or alternatively that she used the name in a particular locality in the context of an earlier right applying only in that locality.
It was admitted by the defendant that if the trade mark was valid, she would have used a sign identical to the mark in relation to identical services to those for which it was registered. However, she maintained that she had a defence in terms of section 11(3) of the Trade Marks Act 1994, and that the claimant’s course was liable to represent to the general public that she was commercially connected to her.
In relation to the counterclaim, it was submitted for the claimant that any, limited, goodwill that had attached to the defendant’s signs had been extinguished by the time that she began using the mark. Further, the defendant’s brand was based on her own name and her use of the words “Archangel Alchemist” had to be viewed against that context.
In her judgment, Judge Clarke said of the claimant’s use of the mark: “The Claimant was clear and convincing in cross-examination, in my opinion, that she enrolled 300 people on [her] course and that it started on 23 September 2019 with a live online session, but that she had sent out pre-course materials a couple of weeks before that date, and those had used the sign ‘ARCHANGEL ALCHEMY’ as the course name. I accept her evidence on this point.”
Addressing the responses to the counterclaim, she said: “There is ample evidence from witnesses that they consider Ms Wenman to be the Archangel Alchemist practicing Archangel Alchemy; it is clear in the evidence I summarised above that third parties introducing the Defendant do so by reference to ‘Archangel Alchemy with Alexandra Wenman’ or ‘Alexandra Wenman the Archangel Alchemist’.”
She continued: “The suggestion that the Defendant is no longer interested in the Defendant’s Signs sits uncomfortably with the fact that she is defending this case in court. Her oral evidence is that the Defendant’s Signs really matter to her, are integral to her business identity and she wishes to keep using them. I accept her evidence.”
On whether the general public would be liable to assume a connection, Judge Clarke said: “[The Claimant] volunteered in her cross-examination, when discussing the common potential customer base shared with the Defendant, that because of the identity of both the marks and the services of both parties, any confusion would be likely to work in both directions: the Defendant’s customers looking for her services or courses might find the Claimant’s Course and get confused, and the Claimant’s customers looking for her course might find the Defendant’s Course and get confused.”
She concluded: “It seems to me inevitable in these circumstances that if someone who had been to one of the Defendant’s Courses told another person she had been to an excellent Archangel Alchemy course without providing Ms Wenman’s name, that person doing her own research might find the Claimant’s course marketed under the Trade Mark and attend it, assuming that it must be, or be connected with, the Defendant’s Course attended by the original attendee. This would amount to a misrepresentation.”
For these reasons, Judge Clarke declared the trade mark invalid pursuant to section 47(2)(b) of the Trade Marks Act 1994 and dismissed the infringement claim. The defendant’s counterclaim of passing off was held to have succeeded.
© Scottish Legal News Ltd 2021