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 claimants registered the domain name on the very day that the merger creating the defendant happened. The reputation to be protected was in effect in place before the actual announcement, deriving from the goodwill of the companies to be merged. The defendant was entitled to summary judgment. The second claimant was also personally liable having personally participated in the torts.
Park J
[2005] EWHC 2663 (Ch), [2006] FSR 39
Bailii
Trade Marks Act 1994 21
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 – 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 – 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 – 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 – French Connection Limited v Sutton ChD 3-Dec-1999
The claimant had established a reputation in the mark ‘FCUK’ in garmets, and had registered the mark, The defendant registered the Internet domain ‘www.fcuk.com’ and established a web-site accordingly. the claimants claimed in passing off and trade . .
Cited – HFC Bank Plc v HSBC Bank Plc (Formerly Midland Bank Plc) CA 26-Apr-2000
Following a trial, and before the judgment was delivered, the parties arranged to meet and settled their dispute. The judges and the court were not advised and continued to take the trouble of preparing the now nugatory judgment. The legal . .
Cited – Phones 4u Ltd v Phone4u.co.uk Internet Ltd ChD 9-Mar-2005
In 1999 the claimant company was carrying on a business supplying mobile phones under its corporate name Phones 4u. At that stage it was trading on a fairly modest scale. In 1999 a Mr Heykali (the second defendant) decided to go into the mobile . .
Cited – C Evans and Sons Ltd v Spritebrand Ltd and another CA 1985
The court considered when a company director might be personally liable for acts of the company: ‘in order to make a director, other officer or employee of a company personally liable for the company’s tort, it is necessary to show either that he . .
Cited – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 December 2021; Ref: scu.375135