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 registration: ‘a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. If it would not inherently lead to passing-off, it does not follow that it is not an instrument of fraud. The court should consider the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place.’
Stuart-Smith LJ, Swinton Thomas LJ, Aldous LJ
Times 29-Jul-1998, Gazette 30-Sep-1998, [1998] EWCA Civ 1272, [1999] FSR 1, [1999] 1 WLR 903, [1998] 4 All ER 476, [2001] EBLR 2, [1998] ITCLR 146, [1999] 1 ETMR 61, [1997-98] Info TLR 423, [1998] Masons CLR 165
Bailii
England and Wales
Citing:
Appeal from – Marks and Spencer Plc, Ladbrokes Plc, J Sainsbury Plc, Virgin Enterprises Ltd, British Telecommunications Plc, Telecom Securior Cellular Radio Ltd v One In A Million and Others PatC 28-Nov-1997
The registration of internet domain names which would infringe trade marks and potentially facilitate passing off can be protected summarily by quia timet injunction. The defendants were dealers in domain names and the use of a trade mark in the . .
Cited – Singer Manufacturing Co v Loog CA 1880
The defendant wholesalers imported sewing machines from Germany which they sold using documents which referred to the machines as using the Singer system. The word Singer was a trade mark of the plaintiffs. The retailers were told that the machines . .
Cited – Southern v How 1616
A trader left counterfeit jewels with a factor who in turn arranged for an agent to sell them as genuine articles. The purchaser discovered the fraud, and had the agent arrested and had the money returned to him.
Held: No action lay as between . .
Cited – Orr Ewing v Registrar of Trade Marks HL 1879
In respect of trade marks which were in use before the 1875 Act but in respect of which registration had been refused, the common law action for infringement of the unregistered mark continued: ‘if the proprietor of a trade mark in use before the . .
Cited – Magnolia Metal Co v Tandem Smelting Syndicate Ltd 1900
‘Going back . . as far as the reign of Elizabeth the form of action which this Statement of Claim adopts has undoubtedly been a form of action in which if the right of a man to have the reputation of selling that which is his manufacture as his . .
Cited – in re Bass Nicholson CA 1931
Lawrence LJ said: ‘The cases to which I have referred (and there are others to the like effect) show that it was firmly established at the time when the Act of l875 was passed that a trader acquired a right of property in a distinctive mark merely . .
Cited – Burgess v Burgess 1853
The plaintiff had carried on a business selling ‘Burgess’s Essence of Anchovies’. His son set up a business with a similar name and purpose.
Held: the court would not restrain the use of his own name by a person in trade, save only if an . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Cited – Edelsten v Edelsten ChD 28-Jan-1863
The plaintiff sought an injunction and damages for infringement by the defendant of his trade mark.
Held: The infringement was innocent. The plaintiff was entitled to an injunction, but for damages only after the defendant had become aware of . .
Cited – Reddaway and Co Ltd v Banham and Co Ltd HL 1896
The plaintiff manufactured and sold Camel Hair Belting. The defendant also began to sell belting made of camel’s hair in the name of Camel Hair Belting. The trader claimed a right in the term ‘Camel Hair’.
Held: The term was descriptive. Where . .
Cited – Iron-Ox Remedy Company Ld v Co-operative Wholesale Society Ld 1907
The plaintiffs, manufactureres of ‘Iron-Ox Tablets’ complained that defendants were selling ‘Iron Oxide Tablets’. The defendants had been unable to obtain the plaintiffs goods for sale and therefore sourced and resold tablets containing Iron oxide, . .
Cited – Guinness v Ullmer 1847
Labels similar to the ones used by the plaintiffs had been printed by a Mr Taylor from blocks manufactured by the defendants, and a trade mark infringement was seemingly alleged.
Held: An injunction was granted to prevent the defendants from . .
Cited – Farina v Silverlock 1855
The defendants sold Eau de Cologne labels which infringed the plaintiff’s trade marks. However they made it clear to the purchasing retailers that they were produced by them and not by the plaintiff, and had made no misrepresentation to the . .
Cited – Generale Bank Nederland Nv (Formerly Credit Lyonnais Bank Nederland Nv) v Export Credit Guarantee Department CA 23-Jul-1997
The bank claimed that it had been defrauded, and that since an employee of the defendant had taken part in the fraud the defendant was had vicarious liability for his participation even though they knew nothing of it.
Held: Where A becomes . .
Cited – Royal Brunei Airlines SDN BHD v Tan PC 24-May-1995
(Brunei) The defendants were a one-man company, BLT, and the one man, Mr Tan. A dishonest third party to a breach of trust was liable to make good a resulting loss even though he had received no trust property. The test of knowledge was an objective . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Singer Manufacturing Co v Loog HL 1882
The plaintiffs manufactured sewing machines, and had trade marked their name. The defendant imported machines which they sold as using the Singer system. The retailers they sold to were not led to think that the machines had been manufactured by the . .
Cited – Draper v Trist CA 1939
An action for passing off can be maintained without having to prove actual damage to trade.
Goddard LJ said: ‘The action is one of that class which is known as an action on the case, akin to an action of deceit. In an action on the case, the . .
Cited – John Walker and Sons Ltd v Henry Ost and Co Ltd ChD 1970
The plaintiff whisky distiller claimed in passing-off against the defendant who supplied bottles and labels to a distiller in Ecuador.
Held: An injunction was granted. Having cited from Singer v Loog, the court added: ‘I would be slow to . .
Cited – John De Kuyper and Son v W and G Baird Ltd 1903
. .
Cited – John Jameson and Son Ltd v R S Johnston and Co Ltd 1901
. .
Cited – Lever v Goodwin CA 1887
In trade mark and patent cases the plaintiff was entitled, if he succeeded in getting an injunction, to take either of two forms of relief: he might claim from the defendant either the damage he had sustained from the defendant’s wrongful act or the . .
Cited – Payton and Co Limited v Snelling, Lampard and Co Ltd HL 1901
The House rejected a suggestion that a manufacturer of goods, which did not by their get-up make a false representation, would be liable for any passing-off which resulted. . .
Cited – White Horse Distillers Ltd v Gregson Associates Ltd 1984
Complaint was made that the defendants were assisting traders in Ecuador in passing off their products as those of the plaintiff.
Held: ‘He [defence counsel] submitted that there can never be a tort where the English exporter exports nothing . .
Cited – Suhner and Co AG v Transradio Ltd 1967
The claimants complained at the defendant having registered a company under the name ‘Suhner’. The defendants gave no justification for using the word ‘Suhner’ as part of their name. They claimed that they had the right to form a company in order to . .
Cited – Direct Line Group Limited v Direct Line Estate Agency ChD 1997
The court granted an interlocutory injunction to the financial services group Direct Line against two individuals who had arranged the incorporation of a large number of companies under names comprising the names or trade marks of well-known . .
Cited – Glaxo Plc v Glaxowellcome Limited ChD 1996
The defendant company registration agent had registered the name Glaxowellcome Limited shortly after the announcement of Glaxo Plc’s intention to make a take-over bid for Wellcome and if it succeeded to re-name itself Glaxo-Wellcome Plc. He then . .
Cited – Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd 1982
(Supreme Court of New South Wales) The plaintiff company was formed from three companies well-known in New Zealand. The defendant company were formed anticipating being sold to the plaintiffs at a substantial profit. Defence Counsel told the judge . .
Cited – Norwich Pharmacal Co and others v Customs and Excise Commissioners CA 2-Jan-1972
The plaintiffs sought discovery of the names of patent infringers from the defendant third party, submitting that by analogy with trade mark and passing-off cases, the Customs could be ordered to give discovery of the names.
Held: Buckley LJ . .
Cited by:
Cited – Bell Atlantic Corporation, Bell IP Holdings Llc v Bell Atlantic Communications Plc, Bell Atlantic Limited PatC 21-Dec-1998
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 . .
Cited – Inter Lotto (Uk) Ltd v Camelot Group Plc CA 30-Jul-2003
The claimant and defendant had each operated using a the name ‘HotSpot’ for a name for its lottery. The respondent had registered the name as a trade mark. The claimant began to use the name first and claimed in passing off, and the respondent . .
Cited – Tesco Stores Ltd v Elogicom Ltd and Another ChD 8-Mar-2006
The claimant sought summary judgment against the defendant for operating websites using domain names which included the claimant’s name and trade marks. Tesco had entered into agreements with a third party company who organised adverts for Tesco on . .
Cited – Microsoft Corporation v Ling and others ChD 3-Jul-2006
The claimant sought damages against the respondent for various infringements in sales of unlicensed products, and also additional damages. The defendant argued that Microsoft’s licensing arrangements acted anti-competively.
Held: ‘the . .
Cited – Phones4U Ltd and Another v Phone4u.Co.UK and others CA 19-May-2006
Mobile phone companies brought claims of passing off and trade mark infringement by the defendant who had registered internet domain names in the same year as the claimants first registered their own names. The defendant appealed a finding that at . .
Cited – Global Projects Management Ltd v Citigroup Inc and Others ChD 17-Oct-2005
GPM had acquired an internet domain name ‘citigroup.co.uk’. Citigroup alleged passing off and trade mark infringement. The claimant complained of an unjustified threat. The defendant counterclaimed, and sought summary judgment.
Held: The . .
Cited – Future Publishing Ltd v The Edge Interactive Media Inc and Others ChD 13-Jun-2011
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 02 November 2021; Ref: scu.144751
