Discovery vs Liberty – When is use of a trade mark an infringement?

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Janine Hollesen | Director | Werksmans Attorneys | mail me


Various Discovery companies took Liberty Group Limited to court over Liberty’s use of Discovery’s VITALITY and DISCOVERY registered trademarks in relation to the Liberty Lifestyle Protection Plan.

During 2019 Liberty introduced a Wellness Bonus feature to its Liberty Plan whereby qualifying customers could decide to disclose their existing membership of an external wellness programme to Liberty and if recognised by Liberty, the policyholder would be paid back a portion of the premiums they paid under the Liberty Plan. This amount would depend on the Liberty Wellness Score, which is determined by the status of the policyholder on the external wellness programme. Liberty recognised DISCOVERY VITALITY and MOMENTUM MULTIPLY.



So, for example, if the policyholder has a Blue Status under the Vitality programme then there would be a lower Liberty Wellness Score and the policy holder would receive a lower percentage of premiums back as compared to a Diamond status policyholder.

Discovery alleged that Liberty had infringed Discovery’s VITALITY and DISCOVERY trademarks and that they had made unlawful and unfair use of the Vitality programme.

While Liberty did not dispute that they used the trade marks, DISCOVERY and VITALITY or that Discovery had not authorised the use thereof, it disputed that the use amounted to infringement.

Liberty had used the marks in documents addressed to its customers including an online quotation that is generated for a customer by an insurance broker and an instruction document issued to the existing policy holder.

Although the quotation did not include reference to DISCOVERY or VITALTITY, the word VITALITY is recognised by the software used to generate an online quotation. Access to the quotation process is not available to the general public, but is processed by the broker who would generate the quotation based on the customer’s wellness programme status.

Discovery’s attack based on trade mark infringement was concerned firstly with primary trade mark infringement and secondly with the well-known status of the marks.


PODCAST

An interview with Janine Hollesen, Director, Werksmans Attorneys, and Dr Ivor Blumenthal, CEO, ArkKonsult, discussing Discovery’s court action against Liberty Group Limited’s use of Discovery’s VITALITY and DISCOVERY registered trademarks in relation to the Liberty Lifestyle Protection Plan.


Primary Infringement

The court confirmed the findings in previous cases regarding the established principle that a trade mark serves as a badge of origin.



The question which is to be answered is whether the unauthorised use of the trade mark misleads a customer by falsely identifying the origin of the goods or services. Asked differently, is there a material connection in trade that amounts to trade mark use? The particular facts and circumstances of each case and the context in which the trade mark is used must be looked at in answering these questions.

The court analysed Liberty’s use of the words DISCOVERY and VITALITY and the


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