Musical Fidelity Ltd v Vickers (t/a Vickers Hi-Fi)
Date
2 December 2002
Legislation
Trade Marks Act 1994 ss10, 12
Copyright Designs and Patents Act 1998 s97(2)
Article 10 of the European Convention on Human Rights.
Keywords
passing off; trade mark infringement; internet; world wide web; automatic hyperlink; copyright in solicitors' correspondence; Article 10 European Convention on Human Rights
Counsel
Denise McFarland, Piers Acland
Solicitors
Penningtons; Hammond Suddards Edge
Judge
Ward, Buxton, & Arden LJJ
Court
Court of Appeal (Civil Division)
Reported
[2002] EWCA 1989, [2003] FSR 50
Summary
The Appellant, Vickers, traded in hi-fi equipment as an authorised dealer for a large number of manufacturers of hi-fi equipment, including that of the Respondent. However, this was no longer the case. Despite this the Respondent had registered the domain name www.musicalfidelity.co.uk, which automatically hyperlinked to the Appellant's website and continued to suggest they remained an authorised dealer.
There was evidence that this had caused both confusion and loss of goodwill. The Respondent's sought and obtained an injunction restraining the Defendant/Appellant from: (1) passing itself off with respect to the name or marks "musical fidelity" or any confusingly similar name or mark, (2) infringing the Respondent's "MUSICAL FIDELITY" trade mark, (3) retaining the companies register or website register any name or elsewhere any name or mark consisting of or comprising "musical fidelity, and (4) infringing the copyright in the letters sent to the Appellant by the Respondent's solicitors by publishing them on his website.
Decision
The Court of Appeal was unanimous in upholding the decision at first instance concerning trade mark infringement and passing off. It was clear that the Appellant had deliberately sought to misappropriate the goodwill in the Respondent's name and mark, which, on the evidence before the court, had resulted in inevitable confusion and a loss of goodwill.
With regards to the issue of copyright infringement Buxton LJ expressed a view, strictly obiter, that he found it surprising that the publication of the solicitors' letters amounted to copyright infringement (see British Oxygen ltd. v. Liquid Air Ltd. [1925] 1 Ch.D 383) and questioned whether such publication should be regarded as having been made with implied consent if considered in light of Article 10 of the European Convention on Human Rights.