Phones4U get through second time
Phones4U Ltd and Caudwell Holdings Ltd v Phone4u.co.uk Internet Ltd, Abdul Heykali and New World Communications (Southern Division) Ltd, a decision of the Court of Appeal which has been lovingly crafted by Lord Justice Jacob, was published today on BAILII.
Phones4U sued the defendants for using domain names incorporating the phrase "phone4u". Before Richard Sheldon QC, sitting last March as a Deputy Judge, Phones4U's claims of trade mark infringement and passing off were both rejected. According to the judge, the word Phones4u was mainly descriptive: the components "Phones" and "4u" (= "for you") were entirely descriptive, though their combination was not. On the evidence, including details of how much Phones4U had spent on marketing, it had not sufficiently demonstrated the existence of a reputation which could support an action for passing off before 2001. Also, the evidence only showed that there had been confusion among customers, rather than that they had actually been deceived. As to trade mark infringement, that failed too since the registration was limited to the specific colours depicted above, right.
The Court of Appeal allowed the passing off appeal but rejected the appeal based on trade mark infringement. It's a confusing case for anyone who, like the IPKat has problems telling his Phones4U from his Phone4U. In brief, Lord Justice Jacob said (at para.29):
"Mr Miller [for the appellant] attacks [the trial decision] on four grounds:His Lordship (with whom Lords Justices Tuckey and Carnwath concurred) then went on to explain why this was the case.
(i) First he says the Judge applied the wrong test in deciding whether or not at the operative date Caudwell had a goodwill protectable by passing off.
(ii) Next he says at the date of first registration of "phone4u.co.uk" an instrument of fraud within the meaning of BT was created. He adds that [the second defendant's]attempt to sell it some 6 months later when he had learned of Caudwell and had not or hardly traded is confirmatory evidence of that.
(iii) Next he says that the Judge wrongly characterised a large number of instances of deception as "mere confusion."
(iv) Finally he erred in placing significance in co-existence for 5 years without "deception" without first considering the extent of Mr Heykali's use during that time".
The IPKat agrees that it is important to understand and carefully delineate the difference between confusion - which is effectively a self-induced state of mind, or at any rate one that has been induced by perfectly honest and innocent conduct - and deception, which is where a false belief or impression is imparted through making a false representation or consciously allowing a false impression to stand. Merpel says, that's fine as between two warring businesses, but what about the poor old customer? He's just as confused whether his false impression was legitimately or unlawfully created ...
How many trade mark lawyers ...? The winner!
The IPKat apologies for the delay in publishing the results of the competition he's running for a chance to win a copy of co-blogmeister Jeremy's new book Trade Marks at the Limit. Competitors had to supply the answer to the age-old question "How many lawyers does it take to change a light bulb?".
Some of the answers were very much based on trade mark law. For example,
* "One. Any more could lead to confusion" (Nick Braddon, HLBBshaw)
* "None. There are five other bulbs coexisting" (Edward Smith, Patent Office)
* "Just one, on submission of Form TM 25 (no fee) provided the alteration does not substantially affect the identity of the lightbulb" (Graeme Fearon, Thring Townsend)
* "So long as the lightbulb is distinctive, why change it?" (Sarah Pollock, Thring Townsend)
* "Five. One to ensure that one is really working with a generic lightbulb. One to run a trade mark search on everything on the package and on any markings on the old bulb. One to find translations of the search results from any of the 17 European languages into whatever language the firm uses around the office. One to analyse whether changing the bulb might conceivably tarnish, dilute or unfairly compete with the old manufacturer's business - and one to figure out a way to bill the client" (C. E. Petit, US-based blogmeister extraordinaire)
* "Hard to say - there would be a likelihood of confusion" (Craig Smith, Freehills)
* "None. They'll just ask the Registrar for an extension" (Edward Smith, Patent Office)
* "Four. One to consider the conceptual nature of the problem, a second to consider the visual nature of the problem, a third to consider the phonetics and a fourth to refer the problem to the ECJ for guidance" (Lee Curtis, Pinsent Masons)
References to the ECJ were pretty popular - three other entrants came up with virtually identical lines.
Some made direct reference to specific trade marks:
* "As many as you want, as long as they can HAVE A BREAK and wait for ARSENAL to win the case" (Jasa Vrabec, Supreme Court of the Republic of Slovenia)
Some noted the real/imagined superiority of patent attorneys ...
* "None - that's a patent question" (Jim Davies)
* "It only takes one trade mark lawyer ... to ask a patent attorney to do it for him" (Simon Haslam, Abel & Imray)
... or design lawyers
* "None. You should get a designs lawyer to take advantage of the 'must fit' exemption" (Graeme Fearon, Thring Townsend)
Other answers were of general legal relevance:
* "One. Because the singular includes the plural" (Astrid Arnold, Lovells)
* "Would that be screw or bayonet? They don't do bayonet ..." (Edward Smith, Patent Office)
There was also this magnificent cri de coeur
"Obviously no TM lawyer is needed to change a lightbulb, for the simple reason that no lawyer would ever indulge in such manual labour, but rather use a "praticante" [or "stageur", "practising student", or whatever it's called in other jurisdictions] to do the job. Since s/he's trying to become [a trade mark lawyer], s/he will change lightbulbs, clean bathrooms, take the dogs of senior lawyers' spouses out and in general do all sorts of things that in ancient times were called slavery and nowadays - since we are more civilised - we call 'practice'" (Andrea Glorioso, Digital Policy, Italia)
and the winner ...
... is Craig Smith (Freehills), with his final entry:
"One very persuasive one. The lightbulb would then be considered by OHIM to be a distinctive non-functional shape teaching consumers about the commercial origin of the light-emitting product".Well done Craig. For someone operating the other side of the world, you show a remarkable understanding of the European trade mark environment. Please email me here confirm the address to which the winning prize should be sent.