Parties


In the High Court (Chancery Division), Justice Jacob, July 2000.

Background

This was a High Court case in 2000, which looked at the question of whether an Irish company traded in the UK because it had a website available here. It was an application for summary judgement, so the judge was only considering whether the defence had any chance of success, rather than actually trying the issue in full.

The Claimant runs a series of shops in the USA under the name "Crate and Barrel", and had a UK trade mark on that name, but did not trade in the UK. The Defendant had a shop in Dublin under that name, but had no shops in the UK. There was some dispute about whether this name had been developed independently, but for the purposes of the argument the Judge had to assume that it had.

The claim

The claim was for infringement of the UK trade mark, on the basis of an advertisment in "Homes and Gardens" magazine, which is sold both in the UK and Republic of Ireland. The advert gave the web address www.crateandbarrel-ie.com, an Irish phone number (with international dialling code) and the heading was "Crate and Barrel, Dublin".

The defendants, relying in part on comments made by the same judge in the High Court stage of 800-Flowers, argued that this advert did not amount to use in the course of trade in the UK. They argued that simply because there was a website available from the UK, it did not follow that there was use in the UK. They also said that the intent of putting that advert in that magazine was to market to Ireland, which did not have its own version of the magazine or equivalent. The Claimant simply said that the 'intent' was irrelevant - a trade mark grants the rights to prevent others using that name or mark in the course of trade, regardless of their intent in so doing.

The side effect of that argument would be that a magazine printed for use in  country X, but which has a handful of copies exported to country Y, could lead to trade mark actions in country Y against those advertisers, even though their primary intent was to market to country X.

The judge noted (external link) that in practice the goods sold (furniture) were not generally for sale by mail order and "This is an advertisment for an Irish shop in a magazine which has an Irish and UK circulation."

He went on to say: "The right question, I think, is to ask whether a reasonable trader would regard the use concerned as 'in the course of trade in relation toods' within the member state [of the EU] concerned. Thus if a trader from State X is trying to sell goods or services into State Y, most people would regard that as having a sufficient link with State Y to be 'in the course of trade' there. But if the trader is merely carrying on business in X, and an advertisment slips over the border into Y, no businessman would regard that fact as meaning that he was trading in Y. This would especially be so if the adverstisment were for a local business such as a shope or local service rather than for goods."

Justice Jacob therefore found that the advertisment was not trade mark infringement. He described the situation with the website as "even clearer". Again, reference was made to 800-Flowers and Justice Jacob's opinion in that case. Again, Justice Jacob took the view that users of the internet expect irrelevant and foreign hits during searches, and that in this case the domain name included 'ie' (for Ireland) and the website itself was clearly for a shop. He did not accept that this website were therefore selling to the world - it was clearly aimed at a specific market.

There was also an argument about the right to use your own name in business. This is protected to some degree by the EC rules on trade mark law (although there are exceptions, which we will not go into). There was discussion as to whether this right also applied to companies, which over time gain goodwill in their name and may also find it difficult to change. In this case, where there was no evidence of dishonesty or copying when chosing the name, the judge felt that the own-name defence applied.

There was then the question of whether Euromarket had actually used the 'Crate and Barrel' trade mark in the UK themselves, as registered trade marks can be revoked if not used. Most of the evidence from Euromarket consisted of sales in the US shops to UK (and Irish) customers, or wedding list services where a UK customer bought something for transit within the USA, or goods outside the specification of the trade mark, or sales made too long ago. The judge therfore regarded there as being little evidence of use of the mark - a point reinforced by other evidence from Euromarket. The judge therefore signalled that, if this was a full trial, the trade mark might well be invalid - a clear hint to the Claimant not to proceed.

The judge also critised the handling of the case, the decision to continue at all and signalled that at a full trial (quite apart from the trade mark being invalid) the case might well have to go to the European Court of Justice to decide the 'own name' and 'genuine use' points. Not suprisingly, the case went no further.