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Cases on: Trade mark infringement and passing off over the internet: jurisdiction

Written by Paul Bicknell on 11 July 2011

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Below is a summary of a few cases on the point of trade mark infringement over the internet and the impact of jurisdictional issues on this point.

1-800 Flowers Inc -v- Phonenames Limited [2002] FSR 191

On 13 February 1993 the Claimant filed an application to register: '800-FLOWERS' pursuant to the then in force section 17(1) of the Trade Marks Act 1938 (as amended). 800-FLOWERS related to the Claimant's telephone number when typed into an alfa-numeric telephone keypad. The Defendant was a licensor of many alfa-numeric telephone numbers. The Defendant had the telephone number 0800 356 9377 which in alfa-numeric lingo is '0800-FLOWERS'. As such the Defendant opposed the Claimant's application. The Defendant's averred that the proposed mark was not capable of distinguishing the services to which it was applied as per section 10(1) of the Trade Marks Act 1938.

Parker J said obiter that there is: "...something inherently unrealistic in saying that A 'uses' his mark in the United Kingdom when all that he does is to place the mark on the internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A...the very idea of 'use' within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area"

In other words "use" required an active step, such a step would include sales for example. However the court stressed that there is no one uniform rule to be applied and it was a matter for the particular facts of each case.

Euromarket Designs Inc v Peters and Crate & Barrel [2001] FSR 20

This case concerned an advertisement in a UK magazine that referred to an Irish website. The court found that there was no facility which could be used to accept UK custom. The judge found that there was no use in the course of trade as required by section 10 of the Trade Marks Act 1994 ("the Act") because there was no evidence of actual solicitation of UK custom.

(1) KK Sony Computer Entertainment (2) Sony Computer Entertainment Europe Limited v Pacific Game Technology (Holding) Limited [2006] EWHC 2509 (Pat)

Under this case the claimants had CTMs and UK registered trade marks and other rights for its PSP consoles. The defendant operated a website www.lik-sang.com <http://www.lik-sang.com>. The defendant was selling genuine Playstation goods however such goods were manufactured by Sony for sale in Japan only. The judge found that the defendant had "used" in the course of trade. The judge said this:

"...it would make no sense if intellectual property rights in the EEA could be avoided merely by setting up a website outside the EEA crafted to sell within it. Were the acts of which complaint is made to have been committed physically within the EEA they would unarguably have been infringing acts. I cannot see how the electronic intermediary of a website which focussed at least in part on the EEA would make them any less so. In my judgment, Sony are entitled to relief in this action and in due course I shall hear Mr Speck on the form of order to be made and in addition, on the question of costs."

Richard Dearlove v Sean Combs [2007] EWHC 375

The court here stated that the: "fundamental question is whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him".

Yell Limited v Louis Giboin & Others [2011] EWPCC 9

This was a case in the Patents County Court for trade mark infringement and passing off of 'YELLOW PAGES' and the 'walking figures' marks (collectively referred to as "the marks"). The defendant's owned and ran websites in particular www.transport-yellow-pages.com <http://www.transport-yellow-pages.com> in which they were using the marks. The defendants' averments were that they were outside the jurisdiction because: (1) the domain suffixes were .eu and .com not .co.uk; (2) they transacted abroad; (3) money received from (2) was paid into a foreign entity; (4) the websites and databases were created abroad; and (5) the website owners were foreign.

The Defendants also argued that as the marks were not distinctive in the USA that the marks are not distinctive in the UK.

Judge Birss QC found that amongst other things: (1) the websites depicted a British flag; (2) the default search county was that of the UK; (3) the businesses offered services that were linked to the UK; (4) the services could be purchased from the UK.

The judge was therefore satisfied that the Defendants had used in the course of trade for the purposes of trademark infringement. Also the passing off action succeeded. On the point of distinctiveness the judge stated that it was for defendants to show evidence that the marks are not distinctive in the UK and to show that the marks had become generic in the UK territory.

"...the fact that a website may be owned or controlled from outside the United Kingdom is not determinative, nor is the fact that the counterparty to a financial transaction taking place via the website may be abroad... Both factors are matters to be taken into account but there is no law that a company situated abroad but using a website to commit infringing acts in this jurisdiction escapes liability."

Conclusion

It is clear from the authorities that trade mark infringement and passing off can still be committed notwithstanding that the website that infringes a trade mark is based in a territory other than the UK. The question is one of fact and degree based on the circumstances and relevant factors as to the question of whether or not there has been "use". Factors will include: (1) whether a purchase can actually be made from the UK; (2) from (1) whether there are any purchase facilities for sales in the UK to be concluded; (3) whether the average consumer will regard the advertisement (as the case may be) as aimed at him; and (4) whether the goods and or services are sold in sterling.

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