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Amid an ongoing intellectual property dispute between Delta Air Lines and Marriott International, the US airline company has commenced a new claim against Marriott asserting passing off with respect to Marriot’s use of the word ‘Delta’ in connection with its hotels.
The legal battle between the two companies began in 2020 where Delta Airlines opposed Marriott’s trademark application to register the mark ‘Delta Hotels by Marriott Residences’.
Prior to the application, Marriott acquired a Canadian business named ‘Delta Hotels and Resorts’ in 2015 and subsequent to that acquisition Marriott continued to use the name ‘Delta’ as the brand name for the hotels.
Delta Air Lines challenges Marriott's use of 'Delta' brand in hotel
Following the opposition by Delta Air Lines, the UK Intellectual Property Office (IPO) restricted Marriott's trademark protection to exclude services such as retail, hotel, restaurant, bar and lounge, resort lodging and reservations services for hotel accommodation.
Marriott subsequently appealed the decision, but the appeal was rejected, and the IPO's decision was upheld by the High Court, which ruled that the services offered by the companies were similar and there was a likelihood of confusion.
Marriott has since opened numerous Delta-branded hotels, prompting Delta Air Lines to bring a claim against Marriot since it asserts Marriott is attempting to pass off its Delta-branded accommodation as being connected with Delta Air Lines.
Allegations of misleading branding
Delta Air Lines alleges the services offered by the companies are 'highly interconnected' since they each offer services connected with the travel industry, and, therefore, consumers may wrongly assume that Marriott's chain of accommodation (under the Delta mark) is associated with the airline corporation.
Delta Air Lines further asserts Marriott has changed its branding to a sans-serif font and dark blue colouring, which is similar to Delta Air Lines' branding.
Delta Air Lines is seeking damages as a result of the passing off, which it estimates exceed £10 million.
The case is ongoing, and the outcome is awaited with interest.
What is a passing off claim?
The tort of passing off is used to protect unregistered trademark rights in the UK.
This action is based on the concept that a trader does not have the right to represent their goods or services as those of another trader, for example, when someone has copied the packaging or brand of another to confuse the source of the goods and services.
The key elements for a claimant to prove in a passing off claim:
- Demonstrating their products have acquired sufficient goodwill, described as "the benefit and advantage of the good name, reputation, and connection of a business" (Inland Revenue Commissioners v Muller & Co's Margarine Ltd), and are known by a distinguishing feature.
- Proving the defendant has falsely represented their goods (either intentionally or unintentionally) and that this is, or is likely to, lead consumers into thinking the defendant's goods or services are those of the claimants.
- As a result of the defendant's misrepresentation, proving damage has been caused, for example, diversion of sales to the defendant, damage of reputation or loss of the opportunity to expand into a broader geographical field.
If a passing off claim is successful, the claimant may be awarded damages in relation to the loss of sales or the damage to goodwill, may seek an account of the defendant's profits or in the event of an injunction, the claimant may be entitled to require the infringing goods to be delivered to them or destroyed.