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 the time he had begun his operation, the claimants had established any goodwill in the name.
Held: The appeal succeeded. The judge had applied the incorrect test, by applying the test for distinctiveness which standard was lower. There was insufficient evidence of intention to deceive.
Jacob LJ said: ‘If a man chooses to apply for his mark in colour to overcome an objection of non-distinctiveness, I do not see why he should not be stuck with a corresponding limitation of rights. It is true that he will have more limited rights than if there had been no limitation – but that is because he was not entitled to more at the time of his application. If, after use and proof that the non-distinctive part of his mark has become distinctive he can register a mark with wider rights, well and good. That is what a prudent trade mark owner would do.’
Lord Justice Tuckey, Lord Justice Carnwath, Lord Justice Jacob
[2006] EWCA Civ 244, Gazette 08-Jun-2006, [2007] RPC 5
Bailii
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 . .
Appeal from – 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 by:
Cited – Moroccanoil Israel Ltd v Aldi Stores Ltd IPEC 29-May-2014
The claimant asserted passing off and trade mark infringement by the defendant in respect of its own hair oil product and the defendant’s sale of ‘Miracle Oil’. The defendant counterclaimed in a threat action. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 December 2021; Ref: scu.241768