British Telecommunications Plc, Virgin Enterprises Ltd, J Sainsbury Plc, Marks & Spencer Plc, and Ladbroke Group Plc v One in a Million Ltd and others

Date

23 July 1998

Legislation

Trade Marks Act 1994 ss2, 9, 10
Trade Marks Act 1938 s2
Trade Marks Act 1905 ss42, 45

Keywords

trade mark infringement; passing off; domain names; summary judgement

Counsel

Geoffrey Hobbs QC, James Mellor, Malcolm Chapple, Alastair Wilson QC, Michael Hicks

Solicitors:

SJ Berwin, Alan Whitfield, and Finers.

Judge:

Aldous, Stuart-Smith, Swinton Thomas LJJ.

Court:

Court of Appeal (Civil Division)

Reported:

[1999] 1 WLR 903, [1999] ETMR 61, [1999] FSR 1, [1998] 4 All ER 476.

Summary:

These five actions were originally heard by Jonathan Sumption QC sitting as a deputy judge of the High Court who granted summary judgment under RSC Ord. 14 against the defendants. The defendants then appealed to the Court of Appeal.

Each of the claimants alleged passing off and infringement of their registered trade mark rights by the registration by the defendant of the domain names Ladbrokes.com, Sainsbury.com etc. At first instance the judge had rejected the submission that the mere registration of the particular domain names did not constitute an act of passing-off as the names had not actually been used. He emphasised that the names were only saleable to the company whose name had been registered and also found that infringement had taken place under s10(3) of the Trade Marks Act 1994.

The Court of Appeal described the internet system and domain name registry procedures. After a detailed historical analysis of the law of passing off and a reconsideration of the defendants' correspondence with the claimants, the Court of Appeal upheld the first instance findings.

Decision:

It held that the placing on the register of domain names of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know One in a Million Ltd and would believe that they were connected with the owner of the goodwill in the name in question. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc.

It was also held that the relevant domain names were instruments on fraud on the basis that any realistic use of them as domain names would result in passing-off and there was ample evidence to justify the injunctive relief granted by the judge at first instance. Accordingly the defendants' appeal was dismissed.