Marks & Spencer Plc v One in a Million Ltd

JurisdictionEngland & Wales
Judgment Date28 November 1997
Date28 November 1997
CourtChancery Division

Chancery Division

Before Jonathan Sumption, QC

British Telecommunications plc and Another
One in a Million and Others Virgin Enterprises Ltd v Same J Sainsbury plc v Same Ladbroke Group plc v Same Marks & Spencer plc v Same

Trade marks - Internet domain names - injunction

Internet names returned to traders

A plaintiff could obtain a final injunction against a future threat of injury restraining someone else from using its name or trademark as a domain name on the Internet and a mandatory order for the assignment to it of the registration of the domain name to prevent threatened passing off or breach of trademark.

Mr Jonathan Sumption, QC, sitting as a deputy High Court judge so held in the Chancery Division granting relief sought by five plaintiffs in five actions for summary judgment, pursuant to Order 14 of the Rules of the Supreme Court, against One in a Million Ltd, Mr Richard Conway and Mr Julian Nicholson, its directors, Global Media communications, a firm, and Junic, a firm, who were all dealers in Internet domain names.

The plaintiffs were British Telecommunications plc and Telecom Securicor Cellular Radio Ltd, Virgin Enterprises Ltd, J Sainsbury plc, Ladbroke Group plc and Marks & Spencer plc.

Mr Malcolm Chapple for British Telecom and Cellnet; Mr James Mellor for Virgin, Sainsburys, Ladbrokes, and Marks & Spencer; Mr Philip Noble for One in a Million, its directors and dealers.

HIS LORDSHIP said that each of the plaintiffs in the five actions for summary judgment was a well known business enterprise possessing substantial goodwill and valuable registered trademarks most of which incorporated the name.

The defendants were dealers in Internet domain names. They registered names and sold them to potential users. They had made a speciality of registering Internet domain names comprising the names or trademarks of well known commercial or other enterprises without the consent of those enterprises. The names were not as yet active sites but were available for such use.

For a dealer in Internet domain names there were in principle only four uses to which the names could be put:

First and most obvious was that it might be sold to the enterprise whose name or trademark had been used, which might be prepared to pay a high price to avoid the inconvenience of there being a domain name comprising its own name or trade mark which was not under its control.

Second, it might be sold to a third party unconnected with the name, so that he might do or...

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12 cases
  • British Telecommunications Plc v One in A Million Ltd
    • United Kingdom
    • Court of Appeal (Civil Division)
    • 23 July 1998
    ...summary judgment under O.l4 as the defendants had threatened to pass off and infringe the registered trade marks of the plaintiffs (1998) FSR 265. 2In each case the first defendant was One In A Million Limited, a company owned and controlled by its two directors, Mr Conway and Mr Nicholson......
  • Annette Phyllis Sewell Claimant v Joseph Allain Stephanie Allain Defendants [ECSC]
    • St Lucia
    • High Court (Saint Lucia)
    • 27 November 2006
    ...on around them at the time when they were making the contract: per Staughton LJ in Scottish Power plc v Brittoil Exploration Ltd. The Times December 2, 1997. 69 Earl Loreburn in F. A. Tamplin S. S. Co. Ltd v Anglo Mexican Pertoleum Products Co., Ltd (1916) 2AC 403 at 404 opined: "A court ca......
  • International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd
    • Australia
    • Federal Court
    • Invalid date
  • Vertical Leisure Ltd (Applicant/Claimant) v Poleplus Ltd and Another (Respondent/Defendant)
    • United Kingdom
    • Intellectual Property Enterprise Court
    • 2 June 2014
    ... ... 1 This is an application for summary judgment in an action for infringement of trade marks and passing off. The claimant, Vertical Leisure Limited, makes and sells pole exercise dance ... on the judgment of the Court of Appeal in British Telecommunications Plc v One in a Million Ltd [1999] 1 WLR 103; [1999] FSR 1. The facts of that case, at least to some extent, were similar ... which included the trading names of some very well-known businesses, including Marks & Spencer, Virgin and BT. Having done so, the defendants offered these domain names for sale for the owners ... ...
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1 firm's commentaries
  • Disputes & Litigation Over Domain Names
    • United Kingdom
    • Mondaq United Kingdom
    • 5 July 2001
    ...list. As to the question of using the domain name and what it means, the leading case on point is the famous 'One in a Million' case ([1998] FSR 265; The Times, December 2, 1997, at 8). In that case the English Court of Appeal rejected the argument of the defendant that since it had merely ......
8 books & journal articles
  • Principles and policy in unlawful competition: An Aquilian mask?
    • South Africa
    • Acta Juridica No. , August 2019
    • 29 May 2019
    ...15.26.17. 97 27 of 1960. 98 See Pitman Training Ltd v Nominet UK [1997] FSR 797 (ChD) 807; Marks & Spencer plc v One in a Million Ltd [1998] FSR 265; British Telecommunications plc v One in a Million [1999] FSR 1 (CA); and Rembert Meyer-Rochow 'The application of passing off as a remedy aga......
    • Singapore
    • Singapore Academy of Law Journal No. 2005, December 2005
    • 1 December 2005
    ...for example, National Bank of Sharjah v Dellborg, 9 July 1997, Court of Appeal, and Scottish Power plc v Britoil (Exploration) Ltd, The Times 2 December 1997. 10 See generally E McKendrick “The Interpretation of Contracts: Lord Hoffmann’s Re-Statement” in Commercial Law and Commercial Pract......
    • Singapore
    • Singapore Academy of Law Journal No. 2002, December 2002
    • 1 December 2002
    ...of the English Court of Appeal. The corresponding English High Court decision is reported as Marks & Spencer Plc v One in a Million Ltd[1998] FSR 265. 27 It should be noted, however, that the relevant English legislation is worded quite differently from the equivalent Singapore legislation ......
  • Anisimova: The Legal Basis for Return to a Third Country in Irish Law
    • Ireland
    • Trinity College Law Review No. I-1998, January 1998
    • 1 January 1998
    ...more concerned with flight routes than atrocities of torture, degrading treatment or punishment against real individuals. 56 Irish Times, 2 December 1997....
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