The claimant sought to restrain the defendants from using the name ‘Bell Atlantic’ so as to cause confusion and a passing of the defendant had registered Internet domain names and sought to register trade marks similar to those of the claimants. The defendant argued that the claimant had last traded in the UK several years before, and that there was therefore no continuing goodwill to protect, and that there was no evidence of confusion or deception.
Held: The use of a name so similar was inherently an instrument of fraud and a passing off. Goodwill in a name is not lost merely by ceasing to use it. Here, there was no positive evidence of abandonment of the name. Passing off was established. Whether the mere addition of words to a trade mark remains an infringement depends on whether the added matter renders the sign so different from the registered mark as to distinguish it from the mark. It did not do that in this case. Summary judgment and an injunction granted.
CH 1998 B No 4245, [1998] EWHC Patents 273
Bailii
Trademarks Act 1994 10
England and Wales
Citing:
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – British Sugar Plc v James Roberston and Sons ChD 17-Feb-1996
The question was raised on whether, given its derivation from article 5 of the trade mark directive, non-trade mark use could be caught by sections 10(1) to (3).
Held: There was no trade mark infringement by the use of a common laudatory word. . .
Lists of cited by and citing cases may be incomplete.
Updated: 20 August 2021; Ref: scu.163087