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 course of the business of a professional dealer for the purpose of making domain names more valuable and extracting money from the trade mark owner amounted to ‘use in the course of trade’.
Mr Jonathan Sumption QC
Times 02-Dec-1997, [1997] EWHC Patents 357, (1998) FSR 265
Bailii
England and Wales
Citing:
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 – 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 – Baywatch Production Co Inc v Home Video Channel 1997
Proof of an infringement under Section 10(3) does require proof that the use was such as was likely to cause confusion. . .
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 – BASF Plc v CEP (UK) Plc ChD 26-Oct-1995
Section 10(3) does require proof that the use was such as was likely to cause confusion. . .
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 – British Sugar plc v James Robertson and Sons Ltd 1996
Use ‘in the course of trade’ means use by way of business and does not just mean use as a trade mark. . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Cited by:
Appeal from – 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 – 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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 10 January 2022; Ref: scu.135917