Musical Fidelity Ltd v Vickers
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE RIMER |
| Judgment Date | 08 May 2002 |
| Neutral Citation | [2002] EWHC 1000 (Ch) |
| Court | Chancery Division |
| Date | 08 May 2002 |
| Docket Number | HC 2001 CO4645 |
[2002] EWHC 1000 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand
London WC2
Mr Justice Rimer
HC 2001 CO4645
MISS D McFARLAND (Instructed by Messrs Penningtons) appeared on behalf of the Claimant
MR P ACLAND (Instructed by Messrs Hammond Suddards Edge, Leeds LS3 1ES) appeared on behalf of the Defendant
This is the claimant's application for summary judgment under CPR Part 24. The claimant is Musical Fidelity Limited ("MF"). It appears by Miss Denise McFarland. The defendant is David Vickers, who carries on business as a sole trader under the name Vickers Hi-Fi. He appears by Mr Piers Acland.
The claim form was issued on 23rd October 2001 and was served together with particulars of claim. The application notice asking for summary judgment was issued on 26th November. Its hearing was twice adjourned by consent, but it was eventually argued before me last Friday, 3rd May.
The action concerns alleged passing off, trade mark and copyright infringement. I shall deal first with the passing off and trade mark claims, and later and separately with the copyright claim.
The case alleged in MF's particulars of claim is as follows. MF was incorporated in 1982 and has since carried on business in the design, development, manufacture and supply of hi-fi equipment. It operates in the United Kingdom, Europe and world-wide and does so via a network of authorised distributors and dealerships. It operates within a specialist or niche market, and its goods sell at what it calls the higher priced end of the market. It is a substantial company, with a turnover of some £5.7 million for the year to 31st July 2001. Since 1982 it has traded by using the name "Musical Fidelity". It is the registered proprietor of various trade mark registrations, including in particular United Kingdom trade mark number 1422148, registered as of 17th April 1990 in respect of the name or mark "Musical Fidelity" for:
"Apparatus and instruments, all for the recording, reproducing, amplifying and transmission of sound; loud speakers; amplifiers; tuners; transformers; digital analogue converters; compact disc players; speaker cables; parts and fittings for all the aforesaid goods; all included in class 9."
MF also maintains web sites providing information about its products and business. Its web sites utilise some 14 domain names, all incorporating the words "musical fidelity", in some cases hyphenated, in others as a single word. It promotes and advertises its business by reference to the name "Musical Fidelity", and it asserts that it has generated and is the owner of a significant and valuable reputation and goodwill in and in relating to that name or mark when used in relation to hi-fi goods or services. It asserts that the name or mark is a leading brand name world-wide in the field of high quality hi-fi products.
Mr Vickers is a hi-fi retailer who trades from 24 Gillygate, York. He trades as Vickers Hi-Fi and has been doing so since 1967. He knows all about MF and its reputation and name, since until June 2001 he was one of MF's authorised distributors. He had been such a distributor for several years, although the evidence is not very precise about that. He is currently an authorised distributor for more than 40 other manufacturers and suppliers of hi-fi equipment. He also deals in second-hand equipment. He services hi-fi equipment and he offers a hi-fi consultation service.
In September 2000, at a time when he was still an authorised distributor for MF, Mr Vickers registered the domain name www.musicalfidelity.co.uk ("the domain name"). Since then he has advertised his business and services on a web site operated by him via the domain name. He registered the name without MF's permission or knowledge. MF's pleaded case in respect of Mr Vickers' use of the domain name is summarised in paragraphs 13 and 14 of the particulars of claim, which read:
"13. At all material times the name or mark 'MUSICAL FIDELITY' when used in relation to hi-fi equipment or related services in particular has become known and recognised by those in the relevant trade as referring to MF's products business and/or services, or those connected therewith or authorised by MF and no other. Further and in any event the name or mark MUSICAL FIDELITY is and has become through use, so distinctive of the goods and services of MF that there is a general perception that any business carried on under and by reference to that name or mark which purports to provide goods or services in connection with the hi-fi market sector is part of the MF network or authorised distributors and/or is otherwise connected in the course of trade therewith.
14. Further and in any event it is inevitable that any business undertaken in competition with MF under and by reference to a name or mark identical with or confusingly similar (whether then used orally or in written form) to MUSICAL FIDELITY will be perceived as being part of the MF group and/or connected therewith. The domain name is such a potentially confusingly similar name or mark."
MF complains that Mr Vickers has carried on business in connection with the advertisement and supply, or offered supply, of hi-fi equipment and services under and by reference to the domain name. It complains that he has passed off his business, goods and services as and for those of MF or as a business connected in the course of trade with MF, and has also thereby infringed MF's UK trade mark, Musical Fidelity, in relation to trade in goods falling within the class of goods the subject of the registration.
The particulars of claim are endorsed with a statement of truth signed by Mr Noel McMichael, A partner in Penningtons, MF's solicitors, and Mr McMichael has also made a short witness statement in support of the present application for summary judgment. There is no suggestion that on the face of it MF has not formally complied with the requirements entitling it to summary judgment. The arguments advanced by Mr Acland for Mr Vickers are that the case is nevertheless an inappropriate one for summary judgment, as it raises disputed matters which can only be resolved at trial.
Mr Acland submitted that the essence of MF's case is, as appears from paragraph 13 of the particulars of claim, that its name or mark Musical Fidelity has become known to those in the hi-fi trade as referring to MF's products. As regards the passing off claim, he referred to the three elements of the tort as summarised by Lord Jauncey in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 348, namely: (1) proof of the claimed reputation, (2) likelihood of confusion, and (3) damage. He focused his oral argument primarily on the second of those three elements, and first referred me to Jacob J's cautionary observations on the subject in Neutrogena Corporation v Golden Ltd [1996] RPC 473, at 482. Jacob J said:
"The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall 'jury' assessment involving a combination of all these factors, see GE Trade Mark [1973] RPC 297 at 321. Ultimately the question is one for the court, not for the witnesses. It follows that if the judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. … It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced, I said more and more 'it depends on the evidence.'"
Mr Acland submitted that it was at least arguable that Mr Vickers' use of the domain name was neither confusing nor likely to be confusing to those in the trade. He explained why. An internet user who accesses the domain name will enter a web site headed "Vickers Hi-Fi" above which are the words "Welcome to the website of one of...
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