Bonnier Media Ltd v Greg Lloyd Smith and Another
| Jurisdiction | Scotland |
| Judgment Date | 01 July 2002 |
| Date | 01 July 2002 |
| Docket Number | No 2 |
| Court | Court of Session (Outer House) |
OUTER HOUSE
Lord Drummond Young
Intellectual propertyTrade marksPassing offDomain name
InterdictInterim interdictRecallJurisdictionDomain name
JurisdictionTrade marksInfringement of trade markPassing offWrong committed by internetplace where harmful event occurredCivil Jurisdiction and Judgments Act 1982 (cap 27), sched 1 art 5(3)1
Article 5 of sched 1 to the Civil Jurisdiction and Judgments Act 1982 provides that A person domiciled in a Contracting State may, in another Contracting State, be sued (3) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred.
The pursuers were the owners, printers and publishers of a newspaper known as business a.m.. They were known as Business Media Scotland Limited until 20 July 2000. On 13 July 2000 they registered a trade mark under the Trade Marks Act 1994. The mark consisted of the words business a.m. on a rectangular background, with the words Scotland's Business, Financial & Political Daily in much smaller type along the top of the rectangle. The mark was originally registered in respect of various materials used in printing and printing matter, and in respect of education and the providing of training, entertainment, sporting and cultural activities. On 12 August 2000 it was further registered in respect of advertising, business management, business administration and office functions. On 20 September 2000 the pursuers launched their newspaper, which aimed to cover business, political and financial matters. The pursuers averred that it quickly built up a reputation as a quality newspaper to be read by its intended market. The pursuers operated a website on behalf of business a.m., with domain names businessam.co.uk, business-am.co.uk, business-am.com, businessam.net, business-am.net, businesspm.co.uk and businesspm.net. They provided an online service at their website under the domain name www.businessam.co.uk. The pursuers averred that the first defender was resident and domiciled in Greece, and was the managing director of the second defenders. They averred that the first defender had previously had substantial business connections in Scotland. The pursuers averred that the second defenders were a company incorporated in Mauritius, with places of business in England and Greece. The defenders maintained that the second defenders' only domicile was in Mauritius. The pursuers averred that the first defender had a history of making use of domain names calculated to pass himself off as other organisations. On 21 May 2002 the pursuers were approached by a company which offered to sell them the domain BusinessAM.com. On the same date the second defenders published an announcement on their website indicating that they had acquired businessam.com from the same company, and that they had plans for an online business advisory service. The pursuers ascertained that the first defender had registered an additional 22 domain names in his name, all of which included the forms businessam, business-am or businesspm. The pursuers sought interdict against the defenders' passing themselves off as the pursuers or threatening to do so, and against the defenders' breaching the terms of sec 10(2) and (3) of the Trade Marks Act 1994 by registering, setting up, administering and maintaining websites
making use of the name business a.m. or domain names using the same sequence of lettering. On 23 May 2002 interim interdict was granted on an ex parte basis. The defenders sought recall or restriction on the grounds that there was no prima facie case in relation to jurisdiction, title to sue, trade mark infringement, or passing off. They also argued that the balance of convenience favoured recall, and that the terms of the interdict were too wideHeld: (1) that art 5(3) of sched 1 to the Act extended to threatened delicts as much as to completed delicts so that the Scottish courts had jurisdiction over the first defender to interdict a threatened wrong that was likely to produce a harmful event within Scotland (p42C43C); (2) that whether the second defenders were domiciled in Mauritius, Greece or England, the Scottish courts had jurisdiction over them if a wrong was threatened that was likely to result in a harmful event in Scotland (p43F); (3) that a website should not be regarded as having delictual consequences in any country where it was unlikely to be of significant interest, and in determining whether the impact of a website was insignificant it was important to look both at the content of the website itself and at the commercial or other context in which the website operated, and it was obvious that the defenders' actings were intended to have their main effect in Scotland so that the requirement that the effect in Scotland of the website should be significant was plainly satisfied (p45E46D); (4) that there was an obvious inference that the pursuers were the persons referred to in the applications for the trade mark and they had accordingly established title to sue (p46GH); (5) that the essence of the pursuers' trade mark was the expression business a.m., the defenders' use of the domain name businessam.com for a website providing an online business advisory service was a prima facie infringement of the pursuers' trade mark, and in any event the domain name was being used as an instrument of fraud (p47H50B); (6) that the pursuers had averred a prima facie case of passing off (p50FG); (7) that the balance of convenience favoured the pursuers (p50H51D); (8) that there was no reason for restricting the interdict (p51H); and motion to recall or restrict interim interdict refused.
British Telecommunications Plc v One in a Million LimitedWLR [1999] 1 WLR 903 followed.
Bonnier Media Limited raised an action against Greg Lloyd Smith and Kestrel Trading Corporation seeking inter alia to interdict and to interdict ad interim the defenders from passing themselves off as the pursuers or threatening to do so, and against the defenders' breaching the terms of sec 10(2) and (3) of the Trade Marks Act 1994, by registering, setting up, administering and maintaining websites making use of the name business a.m. or domain names using the same sequence of lettering.
On 23 May 2002 the Lord Ordinary (Lord Drummond Young) pronounced interim interdict on an ex parte basis.
The cause called before the Lord Ordinary (Lord Drummond Young) on the defenders' motion for recall or restriction of the interim interdict on 7 and 10 June 2002.
Cases referred to:
British Telecommunications Plc v One in a Million LimitedWLR [1999] 1 WLR 903
Euromarket Designs Inc v Peters and Crate & Barrel LimitedUNK [2001] FSR 20
Kalfelis v Bankhaus Schroder, Munchmeyer, Hengst & Co (C189/87) [1988]; ECR 5565
Reckitt & Colman Products Limited v Borden IncWLR[1990] 1 WLR 491
800-Flowers Trade Mark [2002] FSR 12
Textbooks etc referred to:
Robinson, The Law of Interdict, p8
Trade Marks Registry, Registry Work Manual, (August 1998) paras 3.1, 3.5, 3.9 and 3.11.2
At advising on 1 July 2002
LORD DRUMMOND YOUNG'SOpinion--
[1] The pursuers are the owners, printers and publishers of the newspaper known as business a.m.. They acquired their present name on 20th July 2000. Before that, they were known as Business Media Scotland Limited. On 13th July 2000 they registered a trade mark under the Trade Marks Act 1994. The mark in question consists of the words business a.m. on a rectangular background. Along the top of the rectangle, in much smaller type, are the words Scotland's Business, Financial & Political Daily. That mark was originally registered in respect of Classes 16 and 41 in the Trade Marks Rules 2000, but on 12th August 2000 it was further registered to include Class 35. Class 16, which is the class normally used by newspapers, includes various materials used in printing, and also printed matter. Class 41 comprises education and the providing of training, entertainment, sporting and cultural activities. Class 35 comprises advertising, business management, business administration and office functions.
[2] The pursuers' newspaper aims at coverage of business, political and financial matters. It was launched on 20th September 2000. It is averred by the pursuers that it has quickly built a reputation as a quality newspaper to be read by its intended market. In common with all or nearly all newspaper proprietors, the pursuers operate a website on behalf of business a.m.. The pursuers aver that such sites are increasingly important devices for commercial undertakings to promote themselves and, in some cases, to buy and sell. In connection with that website, the pursuers aver that they own six domain names, although in fact they list seven. These are as follows: businessam.co.uk, business-am.co.uk, business-am.com, businessam.net, business-am.net, businesspm.co.uk and businesspm.net. The pursuers provide an online service at their website under the domain name www.businessam.co.uk. They aver that an online service is a vital addendum to their business activities and has built up a substantial goodwill in its own right.
[3] In order to follow the arguments presented to the court, it is necessary to understand the precise nature of a domain name and of a website. A domain name is the text form of a computer's numeric Internet protocol (IP) address. The IP address itself is in numeric form, and the domain name is a textual representation of those numbers. The domain name is used to identify that computer on the part of the Internet known as the world wide web. An IP address takes a form such as www.advocates.org.uk (the website address of the Faculty of Advocates). In this case the suffix .uk is the top level domain, and is a reference to the United Kingdom. The previous suffix .org denotes a particular class of organisations, which includes professional associations such as the Faculty of Advocates. An ordinary commercial company would...
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