Parties


In the Court of Appeal, May 2001

Background

Judgement (external link) was given in 2001. 1-800 Flowers Inc was a US company which sold flowers via a US freephone number 1-800-356-9377, which given the arrangement of letters on a phone keypad became 1-800-FLOWERS.

They sought to register a trade mark in the UK, and applied to register '800-Flowers' as a trade mark. There was an objection, and the Patent Office hearing officer allowed the application, provided that the applicant could not have any rights over '800' or 'flowers' separately. The objecting party, Phonenames Ltd appealed to the High Court, where Jacob J rejected the trade mark registration application.

The evidence for 1-800-Flowers Inc was from one of its directors, who told how the business had been bought up and transformed from a struggling enterprise to one which had a large turnover, including USD250 million in 85 non-US countries in 1996.

The evidence from Phonenames Ltd was by a director of its parent group, which at the time also owned the 'Dyno-Rod plc' business, a successful drains company and various other franchised companies. It was said that Phonenames was being used to market alphanumeric numbers in the UK, e.g. 0800 PLUMBER (0800 7586237). Calls to that number are then either routed to a central number, or routed to the local franchisee - with the person controlling the number taking their cut.

The appeal

The appeal was heard under the 1938 Trade Marks Act, as the 1994 Trade Marks Act was not in force when the application was made. Some minor differences with current law may therefore occur. Phonenames argued that:

• the mark applied for was generic such that it could not be used to distinguish the goods or services of the applicant from those of anyone else (and was therefore invalid);
• the mark applied for was a telephone number and therefore could not be used to link the applicant with services;
• the phone number which corresponded to 0800 FLOWERS had been allocated to someone else, so use of the trade mark would be deceptive (although it had not been allocated in that way at the time of the application);
• that the applicant did not actually intend to use the trade mark; and
• an argument about the use of discretionary powers.

In the judgement the Court of Appeal spent a significant time setting out the arguments advanced to the Hearing Officer at the Patent Office and to the High Court.

The first two questions were whether the mark was "inherently capable" of distinguishing between services of the relevant type and whether it was really just a phone number. 800 Flowers Inc said that it was more than just an encoded phone number, the general public did not associate letters with phone numbers at the time and that the judge was wrong to say that the association between letters and numbers on the keypad was forseeable in 1993. The Court of Appeal did not agree, finding that the mark '800 Flowers' was chosen because of its association with freephone numbers, and was not therefore distinctive.

The second question was whether there was any 'illegality' in use of the name, because of the 'deception' that would be caused if one party had a trade mark of '800 Flowers' and someone else had 0800-FLOWERS the phone number. Phonenames argued that the only thing that '800 Flowers' could usefully relate to in the UK would be the 0800 FLOWERS number - although it could in theory be used in other ways (e.g. as a domain name) - the 'fair and reasonable' use should be taken into account. Even if the 0800-FLOWERS phone number had not been allocated to them at the time, it might have been allocated to another. 800-Flowers Inc argued that this would make the trade marks register subservient to the allocation of phone numbers, and that the High Court judge had been wrong to treat the trade mark application as a means of getting hold of the UK phone number. The Court of Appeal judge was not concerned by this and said that he felt that confusion was 'inevitable'.

The last point at issue was whether 800 Flowers Inc had traded in the UK. Some evidence was provided that a website was in operation and calls had been made to the US from the UK. Phonenames argued that 800 Flowers Inc had not started business in the UK (and Ireland) but was seeking to do so, stopped only by the fact that they did not have (and could not get) the relevant phone numbers - the argument being that even if 800 Flowers Inc had traded in the UK, it was not in relation to the trade mark sought. Broadly, the appeal judge agreed with this last statement. The judge said:

 "In my judgment, however, the evidence in the instant case does not establish actual user of the mark by the Applicant in the UK, even to the "minimal" extent required ... In the first place, I reject as unreal the submission that a telephone call from the UK to the Applicant's US telephone number necessarily involved a use of the mark in the UK. Nor, in my judgement, is the evidence (such as it is) concening the Applicant's internet website sufficient to justify the conclusion that accessing the website amounts to use of the makr at the point of access. In any event, the evidence does not disclose the extent to which the website has in fact been access from the UK> The Applicant has never had a place of business in the UK; the services which is provides are performed outside the UK; and, so far as the evidence goes, the only piece of advertising directed specifically at the UK is the one advertisment in the Independent newspaper [previously discussed]."

Lord Justice Buxton, giving a separate but supporting judgement noted (at paragraphs 136 -139) the difficulties of deciding what amounted to 'use' of a trade mark in the UK and advised caution in simply extending the arguments about the place where a defamation took place.