UNDERSCORE UNDERSCORES TRADE MARK INJUNCTION

The IPKat has sourced this interesting little US trade mark dispute from TMCNet. Perfume Bay has been selling perfumes under the Perfume Bay trade mark and from a website with the perfumebay.com URL. Auction website eBay brought trade mark infringement and dilution cases against Perfume Bay. eBay lost on most of the claims, allowing Perfume Bay to continue using its logo, name and slogan. However, the Central District Court of California found that the perfumebay.com URL was confusing and ordered that Perfume Bay should insert a separator (such as a space or underscore) between the words “perfume” and “bay”. Perfume Bay sought a stay of the injunction because ICANN will not accept domain names containing underscores. The stay was initially granted for 30 days by the District Court in order to enable Perfume Bay to appeal to the Court of Appeals. The appeal court has stayed the injunction until the appeal can be heard in full.

In its original decision, the District Court also appears to have found that eBay had engaged in deceptive advertising, suggesting that there was a link between eBay and Perfume Bay. This allowed Perfume Bay to win on an “unclean hands” defence point

The IPKat thinks that it makes sense to vary an order which is predicated on the possibility of a course of action that cannot be made to happen. He notes though that this is an example of a court modifying its approach to a trade mark issue in the light of ICANN’s rules.