Parties



Background

The Pursuer (Claimant) was Bonnier Media Ltd, who are described in the Opinion of Lord Drummon Young, (external link) the judge as "the owners, printer and publishers of the newspaper known as 'business.a.m.'" who had a trade mark for "business a.m." on a rectangular background with some additional text. This was registered in 2000.

The first defender (Smith) was resident in Greece and was the managing director of the second defender (Kestrel Trading), which was a company incorporated in Mauritius.

The Bonnier Media claimed that they had been contacted by a Mr G Lindstrom of 'LJ and Co' offering to sell the domain for $25,000. Later, there was an announcement that it had been purchased for $11,000 by the second defender, which claimed that it was going to start an 'Online Business Advisory Service'.  Bonnier also claimed that Smith had registered 22 domains in his name, all containing 'business am' or 'business pm', such as <businessam.info>, <businessam.net> and <businessam.com>.

Bonnier Media asked for, and received an interim interdict (equivalent to an interim injunction). Smith and Kestrel asked that this be set aside.

Jurisdiction

Mr Smith lived in Greece. Generally, therefore, he would have to be sued in his 'home' state, on the basis of the Brussels Convention and the Civil Jurisdiction and Judgements Act 1982. However, it is possible to sue in another state if that is where the 'harmful event' occurs, and in this case Lord Young felt that the threatened damage would occur in Scotland.

There was disagreement whether Kestrel Trading was based in Mauritius, Greece or England. However, whatever the actual answer, Lord Young felt that the threatened damage would occur in Scotland, so it did not matter.

It was also argued that setting up a website on a server outside Scotland meant that the 'wrong' was not occuring in Scotland, and reference was made to the 800-Flowers Trade Mark and Euromarket Designs cases. Lord Young said: "..the person who sets up the website can be regard as potentially comitting a [thing on which legal action can be based] in any country where the website can be seen, in other words in any country in the world. It does not follow that he actually commits a [wrong] in every country in the world, however." He went on to say that most websites would not be of interest in most countries, and therefore if the impact of the website in a jurisdiction was minimal, there was no cause of action there.

In this case, the newspaper was based in Scotland so any damage to its reputation, and the effect of any website linked to the domains would be Scotland. Evidence was raised of a previous dispute between the parties, and the links between the defendants were raised. The court therefore felt that the domain names were squarely 'aimed' the Pursuer.

Trade mark infringement

The question of trade mark infringement was dealt with next. Firstly, the defenders raised the question of the the pursuer's trade mark, because the words 'business' and 'a.m.' were (the defenders said) generic and not trade mark-able. The actual trade mark registered consisted of other words too (an issue also raised in phone4u.co.uk). It was therefore argued that that the trade mark had not been infringed. In response, the judge was referred to the One in a Million appeal, and told that the 'business a.m.' part was the major part of the trade mark and that the registrations were designed to be 'instruments of fraud'.


The judge agreed that 'business' and 'a.m.' alone were not registerable as a trade mark, but said that together they were, and that he was satisfied that that mark was infringed. He was also unimpressed by the lack of detail about what the defendant's website was going to contain, and felt that there was likely to a possibility of confusion in the future.

Finally, he also said that he felt that One in a Million should be followed in Scotland, even though it is an English case. He set out the basic feature of 'dishonesty' as being part of passing off and trade mark infringement and said that someone who supplied goods or services knowing that they were part of the dishonesty was also liable. He added "...it is immaterial that the item supplied is a name, or the right to use a name; indeed the supply of a deceptive name is a very obvious means of facilitating the dishonesty involved in passing off or trade mark infringement. Exactly the same is true if a person acquires the right to a name which is calculated to enable him to represent dishonestly that his goods or services are those of a third person, such acquisition is in itself dishonest, and the law must be able to prevent the dishonest use of the name."

Passing Off
The defenders argued that there was unlikely to be any confusion leading to passing off. Lord Young did not agree - bearing in mind the history of dispute between the parties he felt that there was a clear desire to confuse, and that it was not relevant whether, in practice, the level of confusion was small.