HomeInsightsHigh Court dismisses claim for infringement of trade mark ARCHANGEL ALCHEMY and finds the mark invalid as a result of earlier rights

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Facts

Claire Stone is a spiritual author and holistic therapist who has been providing spiritual coaching and education services for over 20 years, both in person and online. She is the author of a best-selling book “The Female Archangels” and is owner of a UK trade mark for ARCHANGEL ALCHEMY, which she registered in October 2019 in Class 41 covering “training course – for soul development – yogic sciences – quantum physics – altered states of awareness – relaxation – holistic health – celestial beings – natural living” (the Trade Mark).

Alexandra Wenman is also a spiritual author and holistic therapist. She is a past editor of, and writer for, “Prediction Magazine” (2010 to 2013), which at that time was the longest-running UK magazine in the mind, body, and spirit field with a monthly print circulation of around 15,000, and a substantial online presence. Since 2011 she has also offered and supplied spiritual and holistic education, training and therapy services to the public, mainly in person but also online.

Ms Stone said that she had begun marketing a 12-month “metaphysical education” online course under the brand “Archangel Alchemy” in or around July 2019. She said that the first such course started on 23 September 2019 and ran until 21 September 2020.

Ms Stone issued proceedings against Ms Wenman for infringement of her ARCHANGEL ALCHEMY trade mark under ss 10(1) and 10(2) of the Trade Marks Act 1994, as a result of Ms Wenman, in the Autumn of 2020, beginning to market and offer for sale an online course under the sign “Archangel Alchemy” on her website and social media accounts.

Ms Wenman said that she had offered spiritual and holistic education, training and therapy services under and/or by reference to “The Archangel Alchemist” and “Archangel Alchemy” (the Signs) since around 2010, such that she had accrued goodwill in each sign in relation to spiritual and holistic services. She said that the relevant public and trade in the UK had come to rely on the Signs when used in relation to spiritual and holistic services as indicating her, and/or her services. She denied trade mark infringement on the ground that the Trade Mark was invalid pursuant to ss 5(4) and 5(4A) of the 1994 Act, which essentially provide that a trade mark shall not be registered if its use in the UK is liable to be prevented by the law of passing off. She also counterclaimed for passing off and for a declaration of invalidity pursuant to s 47(2)(b) of the 1994 Act.

The parties were agreed on the identity of their marks, services, markets and potential customers. The main dispute was whether Ms Wenman had sufficient goodwill in the Signs and could show misrepresentation by use of the Trade Mark to defend based on an earlier right under passing off.

Decision

Her Honour Judge Melissa Clarke, sitting as a Judge of the High Court, found that Ms Stone had not begun marketing her course in July 2019, but on 7 September 2019. This was when she started using the phrase “Archangel Alchemy” and began soliciting bookings for her course. This was therefore the date at which an action for passing off would have arisen.

As for whether Ms Wenman had generated sufficient goodwill in the Signs as at 7 September 2019, the question was what level of goodwill was required to sustain a claim in passing off.

Ms Wenman provided several categories of evidence that she said showed that she had established protectible goodwill in the Signs, including:

  1. 33 monthly full-page columns produced for Prediction Magazine between 2010 and 2013, which were entitled “Archangel Alchemy”;
  2. “Archangel Alchemy” workshops in which she used her “Archangel Alchemy” process;
  3. flyers and advertisements for workshops and retreats titled with reference to the Signs;
  4. exhibits at significant Mind Body Spirit Festivals in 2013 and 2014 in London and Manchester at which she promoted herself under the Signs;
  5. podcasts on YouTube under the name “Archangel Alchemist”;
  6. development of her “Archangel Alchemy” processes and columns into a book entitled “The Archangel Alchemist” which was submitted to several publishers in 2014;
  7. offering for sale “Archangel Alchemist” mini PDF e-courses on her website; and
  8. advertising of an “Archangel Alchemy” online course on her website on 24 September 2019.

HHJ Clarke found that Ms Wenman’s columns in Prediction Magazine were drivers for her personal business. The columns contributed to Ms Wenman’s reputation as “The Archangel Alchemist” who carried out “Archangel Alchemy”. This was a springboard from which she grew her business, as demonstrated by some readers of the magazine contacting her directly, wanting to become a customer of hers. Further, Ms Wenman circulated copies of her columns as part of her marketing efforts.

HHJ Clarke rejected Ms Stone’s contention that the magazine articles did not show use of “Archangel Alchemy” in the course of trade. HHJ Clarke referred to one witness who said that she had met Ms Wenman at a conference, become interested in her work and had completed some courses with her (which included “Archangel Alchemy”). Only then had she discovered that Ms Wenman had a column in Prediction Magazine, at which point she began purchasing it. In HHJ Clarke’s judgment, this was a clear example of Ms Wenman’s use of “Archangel Alchemy” in the course of her trade.

Further, HHJ Clarke rejected Ms Stone’s argument that there was a disparity between Ms Wenman’s professed use of the Signs as a brand and their absence on her website. HHJ Clarke accepted Ms Wenman’s evidence that she was not very good at marketing herself online or updating her website and that the focus of her business development was not her website. It was clear, HHJ Clarke said, that Ms Wenman had grown her business from her columns in Prediction Magazine, by word-of-mouth recommendations, hard copy marketing flyers and appearances at events, shows and retreats.

HHJ Clarke also rejected Ms Stone’s argument that, to the extent the Signs were used as a brand indicator, any trade attributable to their use and the goodwill arising, was de minimis. HHJ Clarke said that, although only four sales of “Archangel Alchemy” mini PDF e-courses were identified, even four sales was trade that gave rise to goodwill. In any event, there was ample clear evidence, that Ms Wenman was very busy, carrying out events and one-to-one sessions, large shows and retreats, much of which involved “Archangel Alchemy” techniques and was advertised by reference to “Archangel Alchemy”, and all of which was, or drove, paid-for trade amounting to between £28,000 and £40,000 per year. The amount of work carried out by Ms Wenman attributable to “Archangel Alchemy” was therefore more than trivial and had generated sufficient actual goodwill to be capable of damage by reason of a misrepresentation.

HHJ Clarke also rejected the contention that “Archangel Alchemy” was simply a label for a technique or method since the evidence showed that Ms Wenman promoted herself and her events by reference to the Signs in flyers, podcasts, advertisements etc. Further, third parties referred to Ms Wenman as the Archangel Alchemist. In HHJ Clarke’s view, this was trade mark use in the same way and for the same purpose and to the same customers as Ms Stone’s own use of the Trade Mark.

Accordingly, HHJ Clarke found that Ms Wenman’s services were carried on under and/or by reference to the Signs before 7 September 2019 and were sufficient to generate goodwill in the Signs as at that date.

As for misrepresentation, because of the identity of both the marks and the services of both parties, HHJ Clarke said that any confusion would be likely to work in both directions, whether customers were looking for Ms Wenman’s or Ms Stone’s services. Further, HHJ Clarke said that it was inevitable that someone who had been recommended to Ms Wenman without knowing her name might easily find Ms Stone’s course marketed under the Trade Mark and attend it, assuming that it must be connected with Ms Wenman. This would amount to a misrepresentation.

Accordingly, goodwill and misrepresentation had been established. Ms Stone had already admitted, in those circumstances, damage and invalidity under s 5(4A) and liability under the law of passing off. HHJ Clarke therefore declared the Trade Mark invalid pursuant to s 47(2)(b). She also held that the counterclaim in passing off succeeded and the claim for infringement of the Trade Mark failed. (Claire Stone v Alexandra Wenman [2021] EWHC 2546 (IPEC) (22 September 2021) — to read the judgment in full, click here).

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