14 June, 2006
When is a similar business name unlawful? That was the point raised in a recent case in the Court of Appeal. In this case Phones 4u had bought a case against the owner of the domain name phone4u.co.uk for trade mark infringement and passing off.
The issues came down to whether a trade mark which was registered in colour could only be infringed if the mark was used in colour and whether the correct test had been used in deciding whether there had been passing off.
The Court held that because at the time the offending domain name was registered Phones4u was already so well established and so had considerable goodwill attached to its name there could not be any use of phone4u.co.uk. That was so even though there was a limited amount of proven confusion or deception of customers which is commonly the main evidential issue in this sort of case.
To be registered at all a trade mark must be distinctive enough to mark out goods or services as coming from the owner.
If people rely on colour in their trade mark in order to make it distinctive enough to be registered then they will find that their rights are limited accordingly. However through use of the trade mark it may be proved that an originally non-distinctive element in the trade mark has become distinctive and therefore it is open to the trade mark owner to register the mark with wider rights.
There are lessons to be learnt for any business from this case. Firstly, care must be taken when setting up a business or registering a domain name to ensure that possible challenges are spotted and where possible addressed or avoided.
Secondly when registering a trade mark although on first registration rights may be limited distinctiveness can arise through use and therefore more rights can be attached to the trade mark later on. Trade marks can develop over time so it is important for trade mark owners to keep the extent of their protected rights under review.
Tel 01254 222399 or email Daniel Milnes