FREE 4ALL FOR PHONE(S) 4U

Here's another curiosity which has so far surfaced only on the LexisNexis-owned Butterworth All England Direct subscription service (how do they get these cases?). In Phones 4u Ltd and another v Phone4u.co.uk Internet Ltd and others [2005] EWHC 334 (Ch) Phones 4u had since 1995 run a chain of shops called ‘Phones 4u’; its parent company owned a trade mark consisting a logo limited to the colours red, white and blue.

In August 1999 Phone4u.co.uk obtained the domain name ‘phone4u.co.uk’ and set up an internet-based business selling mobile phones. The domain name ‘phone4u.com’ was also acquired. Phone4u.co.uk was incorporated in April 2000 but did not trade; cash generated as a result of sales from the Phone4u.co.uk website were accounted for personally. Phones 4u sued Phone4u.co.uk for passing off and trade mark infringement. The primary issue for determination by the court was whether Phones 4u had established that it had, at the relevant date, acquired sufficient goodwill or reputation in the term ‘phones4u’.

Richard Sheldon QC, serving as a Deputy Judge in the Chancery Division, dismissed Phones 4u's claims.

On passing off

* Taking trade presence, turnover and brand awareness into account, Phones 4u failed to shift the burden of proving that it had the requisite goodwill or reputation in the expression ‘Phones 4u’ at the relevant date.

* Bearing in mind the descriptive nature of the name ‘Phones 4u’, the fact that there was significant use was insuffficient to establish the existence of reputation in August 1999.

On trade mark infringement

* Phones 4u, having opted for a limitation as to the colours of its registered mark under the Trade Marks Act 1994, s.13, could not then assert infringement arising out of Phone4u.co.uk's use of the mark in different colours. Accordingly, the claim for trade mark infringement would also be dismissed.

Phone 4u or Phones 4u? It's a close call ...

The IPKat can't believe that the limitation of a trade mark to just three colours means that a mark loses the protection available against similar marks that cause a likelihood of confusion -- but he's prepared to wait till he sees the full judgment before taking sides ... Merpel says marks of this nature are so descriptive it seems a shame they're entitled to any protection at all. Such protection as there is must be a kindness to consumers rather than a favour to unimaginative traders.

Phones 4u here; Phone4u.co.uk here
Some interesting phone sites here, here and here