Musical Fidelity Ltd v Vickers
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE WARD,Lady Justice Arden,LADY JUSTICE ARDEN,LORD JUSTICE BUXTON,Lord Justice Buxton |
| Judgment Date | 02 December 2002 |
| Neutral Citation | [2002] EWCA Civ 1989 |
| Docket Number | A3/2002/1084 |
| Court | Court of Appeal (Civil Division) |
| Date | 02 December 2002 |
[2002] EWCA Civ 1989
Lord Justice Ward
Lord Justice Buxton and
Lady Justice Arden
A3/2002/1084
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICCHANCERY DIVISION
(Mr Justice Rimer)
Dr Piers Acland (instructed by Messrs Hammond Suddards Edge, Leeds) appeared on behalf of the Appellant Defendant
Ms Denise McFarland (instructed by Messrs Penningtons, London EC4) appeared on behalf of the Respondent Claimant
I will ask Lady Justice Arden to give the first judgment.
This is an appeal from the order of Mr Justice Rimer dated 8th May 2002, giving summary judgment in this action for the respondent and making consequential orders.
The main part of the order is paragraph 1, which contains an injunction against the appellant from doing the following acts, namely:
"(a)passing off or attempting to pass off any products, business and/or services as and for the products, business and/or services of the claimant or as products, a business, or services connected or associated with the claimant in the course of trade, by the use in relation thereto of the name or marks "MUSICAL FIDELITY"/"musicalfidelity" or any name or mark confusingly similar thereto;
(b)infringing UK Trade Mark numbered 1422148 "MUSICAL FIDELITY" registered in class 9;
(c)retaining on any companies register, any register of business names, and/or the records and register of any web or internet service provider any name which consists of or comprises the name or mark "musical fidelity" (including in particular www.musicalfidelity.co.uk);
(d)infringing the copyright in the works being letters sent to the defendant (defined under paragraph 15 of the particulars of claim herein issued on 23 October 2001) or any of them."
Accordingly, the claim concerned passing off and trade mark and copyright infringement.
The background is that since 1982 the respondent, Musical Fidelity Limited, has carried on business in the design, development, manufacture and supply of hi-fi equipment. It operates in the United Kingdom and elsewhere via a network of authorised distributors and dealerships. It operates in a niche market within what is called the higher-priced end of the market. It has turnover of some £5.7m as at the end of July 2001. Since 1982 it has traded under the name "Musical Fidelity". It is the registered proprietor of various trade marks, including the trade mark specified in the judge's order, which is registered as of 17th April 1990 in respect of the name or mark "Musical Fidelity" for, among other things, hi-fi equipment.
Musical Fidelity maintains websites providing information about its products and business. It has some 14 domain names, all incorporating the words "Musical Fidelity". The respondent alleges in the particulars of claim that it has promoted and advertised its business and services by reference to the name or mark "Musical Fidelity" and that it has carried on such activities at a significant level. It alleges that, as a result, it has generated, and is the owner of, a substantial and valuable reputation and goodwill in and relating to the name or mark "Musical Fidelity", particularly when used in connection with any business, goods or services relating to hi-fi equipment generally.
The appellant, Mr David Vickers, is an individual who carries on trade under the name or style "Vickers Hi-Fi" from retail premises at 24 Gillygate in York. Until June 2001 he was one of the respondent's authorised distributors. He is apparently an authorised distributor for a large number of other manufacturers and suppliers of hi-fi equipment. He also deals in second-hand equipment and services hi-fi equipment and he offers a hi-fi consultation service.
These proceedings were issued in October 2001; that is after Mr Vickers had ceased to be one of the authorised distributors of the respondent. The particulars of claim allege that the defendant sells hi-fi and related equipment from his premises and advertises his business via a website using the domain name www.musicalfidelity.co.uk. The appellant registered that name on 6th September 2000 without the permission or knowledge of Musical Fidelity, the respondent.
The particulars of claim allege that the name or mark "Musical Fidelity", when used in connection with hi-fi equipment, has become known and recognised by those in the relevant trade as referring to the respondent's products, business and/or services and those connected therewith or authorised by it, and no other. It is further alleged that "Musical Fidelity" is so distinctive of the goods or services of the respondent that there is a general perception that any business carried on by reference to that name which purports to provide hi-fi equipment is part of the respondent's network of authorised distributors or is otherwise connected with it. The particulars of claim also allege that it is inevitable that any business undertaken in competition with the respondent by reference to a name which is identical to, or confusingly similar to, its name will be perceived as being part of the respondent's group or connected therewith. It is said, of course, that the domain name is such a potentially confusing mark.
The particulars of claim contend that confusion was inevitable, as I have mentioned, but in addition two letters are referred to in the pleadings. The first letter is dated 24th September 2001 and is from Lintone Audio to Musical Fidelity Limited. It refers to the fact that upon visiting the domain name the person operating the computer will be taken to the website of Vickers Hi-Fi, which proclaims that Vickers Hi-Fi is one of Musical Fidelity's oldest retailers. The letter states:
"Whilst this claim may be true, I believe that any potential customers of ours, and other retailers of Musical Fidelity products, are being unfairly directed towards Vickers Hi-Fi who are using what would seem to me a web address which is in my opinion the official web address of Musical Fidelity."
The second letter is dated 25th September 2001 and is from Kevro International Inc. Two material paragraphs are as follows:
"Many of our customers have complained bitterly over the fact that when they attempt to go on line to your website they inevitably end up logging on to some company by the name of `Vickers Hi-Fi'. I suspect it is because they forget about the `dash' between `Musical Fidelity' when logging on.
Needless to say, this makes our job of marketing your fine product much harder. I suspect we have lost a fair amount of business due to this annoyance and frustration borne by the consumer and customer/dealer alike. Thus, I strongly urge you to correct this problem very quickly and to do your utmost to gain ownership of the website www.musicalfidelity.co.uk which we all feel is rightly yours. Failing to do so will, I am sure, considerably curtail our planned growth in North America and cost us all dearly in the end. This must not happen."
The particulars of claim contained a further claim in trade mark infringement. In addition, the particulars of claim contained a separate allegation of breach of copyright arising out of the four letters referred to in the judge's order which the defendant had posted on its website. The four letters were from the respondent's solicitors. It was alleged in the pleading that such works were original works and that the respondent had at least equitable title in the works and, moreover, that the solicitors were ready to execute legal assignments of the copyright in such letters to the respondent if that was necessary.
The particulars of claim were endorsed with a statement of truth signed by Mr Noel McMichael, a partner in Penningtons, the respondent's solicitors.
The first claim with which Rimer J had to deal was the claim in passing off. There was no dispute as to the test which had to be satisfied on an application under Part 24. It had to be shown that the defendant had a real, and not a fanciful, prospect of success at trial (and on this see Swain v Hillman [2001] 1 All ER 91, per Lord Woolf MR, in a passage which was cited and approved by Lord Hope in Three Rivers District Council v Bank of England [2001] 2 All ER 513, at para 90, p.541). Likewise, there was no dispute as to the law on passing off as applied by the judge. There was no challenge to the principles which the judge applied. He referred to the speech of Lord Jauncey in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 348, where Lord Jauncey identified three elements of the tort as proof of claimed reputation, likelihood of confusion and damage. When the judge referred to likelihood of confusion he meant, in my judgment, that there had to be a misrepresentation which had deceived, or was likely to deceive, persons who would be customers for the product. The judge also referred to what he called the "cautionary observations" of Jacob J in Neutragena Corporation v Golden Ltd [1996] RPC 473 at 482, where the judge said that the question of the likelihood of deception was one for the court and not for the witnesses. However, where the issue was marginal the judge might well be assisted by the evidence. Jacob J then added:
"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'."
The evidence as to the domain name which had been...
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