CASE No: CH 1997 M No.5403

In The High Court Of Justice

Chancery Division

Jonathon Sumption Q.C. (sitting as a Deputy Judge of the Chancery Division)

Friday the 28th November 1997

Order

Important:-
Notice to the Defendant

1. This Order prohibits you from doing and obliges you to do the acts set out in this order. You should read it all carefully.
    
2. If you disobey this Order you may be found guilty of Contempt of Court and any of the directors of the First Defendant may be sent to prison or fined and you may be sent to prison or fined or your assets may be seized.

On 27th November 1997 Counsel for the Plaintiff made an application for summary judgement against all the Defendants to the Judge. The application was attended by Counsel for the Defendants. The Judge gave judgement on the 28th November 1997, granting summary judgement.

It is ordered that:

1. The Defendants and each of them be restrained(in the case of the First Defendant whether acting by its directors officers servants or agents or any of them or otherwise howsoever and in the case of the Second and Third Defendants whether acting by their respective selves, servants or agents or any of them or otherwise howsoever and in the case of the Fourth and Fifth Defendants whether acting by any of their respective partners, servants or agents or any of them or otherwise howsoever) from doing the following acts or any of them is to say:
    
   1. using the internet domain name marksandspencer.com or marksandspencer.co.uk or either of them;
       
   2. establishing or operating a web site at marksandspencer.com or marksandspencer.co.uk or either of them;
       
   3. offering for sale or assignment or transfer or assigning or transferring the registration for the internet domain name marksandspencer.com or marksandspencer.co.uk or either of them to any person other than the Plaintiff;
       
   4. relinquishing or allowing the registration to lapse for the internet domain name marksandspencer.com or marksandspencer.co.uk or either of them without first having given 10 days notice in writing to the Plaintiff's solicitors of such intention so to do;
       
   5. registering any Internet domain name which comprises or includes the words "marks and spencer" or "marks and spencers";
       
   6. doing any of the acts set out in (a) to (c) above in relation to any internet domain name which comprises or includes the words "marks and spencer" or "marks and spencers";
       
   7. otherwise passing off any goods or services as being the goods or services of or approved by the Plaintiff, whether by the registration or use of or dealing in the internet domain names marksandspencer.com and/or marksandspencer.co.uk or by any other use of or dealing in the mark "marksandspencer" or any other sign similar thereto;
       
   8. otherwise infringing any of the Plaintiff's Registered Trade Marks comprising or including the mark "marksandspencer" and in particular those numbered 2,028,077 or 1,332,039 or either of them;
       
   9. enabling or authorising any other person to do any of the aforesaid acts.
       
2. The Defendants and each of them (in the case of the First Defendant by a proper officer) do forthwith take all such steps as may be necessary to effect an assignment of the registration for the Internet domain names "marksandspencer.com" and "marksandspencer.co.uk" to the Plaintiff.
    
3. Within 7 days of the date of this Order the Defendants do make swear and serve on the Plaintiff's solicitors Affidavits disclosing to the best of their respective knowledge information and belief whether any of the Defendants has any other internet domain name registered which includes the word "marksandspencer" and whether any of the Defendants has applied for such registration.
    
4. There be an inquiry as to damages for passing off and infringement of registered trade marks provided that if the Plaintiff does not commence such inquiry by 1st February 1998, there be no Order on the inquiry.
    
5. The Defendants do pay to the Plaintiff all sums found to be due to it on the taking of such inquiry together with interest pursuant to section 35A of the Supreme Court Act 1981 or under the equitable jurisdiction of the Court.
    
6. The Defendants do pay to the Plaintiff its costs of and occasioned by this Action down to and including this Order, which costs are hereby assessed pursuant to Order 62 rule 7(4) in the gross sum of £10,000, such sum to be paid within 28 days of the date of this Order.
    
7. The costs of the inquiry are reserved.