Mystery judge rules in Tesco case

The IPKat's attention has been drawn to Tesco Stores Ltd v Elogicom and another [2006] EWHC 403 (Ch), a Chancery Division decision yesterday of Philip Sales, sitting as a Deputy Judge of the High Court (full text available on BAILII).

Supermarket giant Tesco, which owned registered trade marks for the words TESCO and TESCO.COM, conjured up a scheme by which third party website providers could become Tesco affiliates, placing links from their website transferring consumers to Tesco's own website. Tesco would then pay commission to the affiliate in respect of sales so generated. Elogicom became one such affiliate. However, instead of throwing a link from its own website to that of Tesco, it registered a number of its own websites which included the word word ‘tesco’ in the URL. Consumers arriving at those unauthorised websites were taken directly to a Tesco site; any sales made through accessing those sites would earn Elogicom commission.

Tesco sued for trade mark infringement, seeking summary judgment and seeking injunctive relief.

Philip Sales allowed the claim, holding as follows:
* even if the service provided by the Elogicom was not identical to the services for which Tesco had registered the trade marks , its service provided was similar to those for which the trade marks were registered - the provision of internet access to shopping services, under the Trade Marks Act 1994, section 10(2)(b);

* by registering and making its own ‘tesco’ domain names available as pathways on the internet to Tesco's websites with a view to generating income for itself in the form of commission, Elogicom had used in the course of trade a series of signs (the domain names) in circumstances where there existed a likelihood of confusion on the part of the public, including the likelihood of associating Elogicom's service (the provision of internet access to Tesco's websites) with the trade marks.

* the use of the ‘tesco’ domain names specifically with the object of trading on and benefiting from Tesco's reputation was not in accordance with ‘honest practices’ in commercial matters and thus infringed Tesco's trade marks under section 10(3) of the 1994 Act, being without due cause and taking unfair advantage of the distinctive character and repute of Tesco's brand. Elogicom's use was also detrimental to the distinctive character or the repute of Tesco's trade marks.
On the merits, the IPKat is struggling a little to understand what's going on. For example, if Elogicom's use of the Tesco marks had the effect of sending consumer traffic directly to Tesco's own website, must we say that consumers (i) intend to deal directly with Tesco but (ii) they are confused into dealing directly with Tesco? Merpel agrees and adds, is it any different from a trader putting up a sign in the street reading "This way to Tesco", which enables consumers to get directly to the supermarket?

The IPKat wonders why Philip Sales presided over this case. He seems a nice chappie (see the photo, upper right)and has a good reputation as a lawyer too - but he's not an intellectual property specialist. What's more, he's junior counsel, not a Silk. Is everyone at the Bar going to get a turn juudging IP disputes? Merpel says, can I have a go too, please ... please!

Previous IPKat blog on giving IP cases to non-specialist non-judges here

ECDR - latest copyright cases

The March 2006 issue of Sweet & Maxwell's much-beloved, if little known, European Copyright and Design Reports, has now been published. It contains four English versions of non-English decisions:
* Thane International's application , in which a German Landsgericht explains that prior publication of an unregistered design in the USA will undermine EU protection for it.

* Peter O**** v F****, an Austrian copyright case before the Supreme Court, dealing with the question whether the making of a painting from a photograph of a bunch of grapes leads to legal liability.

* Yaacov v Inbar, in which the Tel Aviv District Court,in a decision since affirmed by the Israeli Supreme Court holds a law student liable for turning his lecture notes into a Tort Textbook.

* Hotel de Girancourt v SCIR Normandie, where the French Cour de Cassation ruled that the owner of a building has no proprietary right to stop others taking photos of it.
There's also the ruling of Judge Michael Fysh in Woodhouse v Aquila, the English Patents County Court decision on the meaning of the term "informed user" in UK design law.

As ever, if you'd like to recommend the IPKat cases that should be reported in the ECDR, email him here and let him know all about it.


  1. Possibly one might argue that the surfers were deceived into causing Tesco to give money to Elogicom when they had not intended to do so?

    Although wouldn't domain-name hijacking be a less logically tortured way of putting a stop to this?

  2. In what possible way does a report from the Tel Aviv District Court qualify as "European"?

  3. Trade mark cases (indeed all IP cases except patent and registered design cases) have never been specifically allocated to specialist judges - they just get allocated to the general chancery list.

    The listing office does try to allocate particularly difficult cases to specialists in IP. However, straightforward cases end up with chancery or deputies who are not IP specialists. There is nothing particularly concerning about this. Judges of almost all kinds have to end up hearing cases in areas in which they did not specialise (nb the criminal law: hardly any QB judges practiced in criminal law, and yet almost all are called upon to preside over the most serious criminal trials).

    Philip Sales is actually quite senior although he is not a QC - he's the senior standing counsel to the Government.

  4. Dear Anonymous: most reports from Tel-Aviv would not, I'm sure, qualify for inclusion in the ECDR, but this one discusses English statute and case law principles that remain of some interest and relevance in the UK today.

  5. The sign at a the street corner analogy works to a point - but would the trader getting the custom then have to pay commission?

    That said - if the domains had been either dormant or pointing to a competitor - would Tesco have got the business? It seems a pretty astonishing click through on a "typosquat" to get £26K commission business in one month too!

    Finally, is a TM (and passing off right) designed to protect the interests of the rights holder or of the consumer? If the latter, then surely no harm has been suffered, since they pay the same price for the same goods as they would have done if they'd gone in direct through the "virtual front door".

  6. Philip Sales is the Treasury Devil - First Counsel to the Crown. By tradition the incumbent of that post does not take silk, but is regarded as being of the calibre. Treasury Devils who become judges do so without taking silk first. Lord Brown of Eaton-under-Heywood and Lord Justice Richards are Sales' two immediate predecessos and neither of them took silk.

  7. In my last post I missed out Lord Justice Laws.


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