MBNA America Bank NA v Stephen Freeman

Date

17 July 2000

Legislation

Trade Marks Act 1994, s.10(3)

Keywords

trade mark infringement; passing off; domain name transfer; interlocutory injunction

Counsel

Piers Acland, Freeman in person

Solicitors:

Bristows; Freeman in person

Judge:

Nicholas Strauss Q.C. sitting as a deputy judge of the High Court

Court:

High Court (Chancery Division)

Reported:

[2001] EMLR 13

Summary:

The Defendant was the operator of a website and as part of that business he registered the web address www.mbna.co.uk, which he claimed was for Marketing Banners for Net Advertising. However, at the date of trial he had not started trading in relation to the website. The Claimant, the world's largest independent credit card issuer and who conducted business through the www.mbna.com website, claimed that the Defendant's activity infringed their registered trade mark for MBNA. In addition, in the event of the website being activated, the Defendant's activity would also amount to passing off, despite their respective fields of economic activity being entirely dissimilar. The Claimant therefore sought injunctions to: (1) restrain the Defendant from operating the www.mbna.co.uk website and (2) prohibit the Defendant from dealing with the website unless it was a transfer to them, and damages.

Decision:

In respect of the first injunction, restraining the Defendant from operating the site, the judge was not satisfied that the Claimant had discharged their obligation to "establish a real risk of uncompensatable damages" and therefore refused the application. However, with regards to the second injunction that would restrain the Defendant from dealing with the website, the judge was satisfied that the Defendant should be prohibited from selling the website whilst there was a possibility that its value might have been enhanced by improper use of the Claimant's goodwill.