Use of term 'buried in computer' not an infringement

eThe IPKat's friend Daniel Alexander QC, sitting as a deputy judge of the Chancery Division (England and Wales), gave his decision in RX Works Ltd v Hunter (trading as Connect Computers) [2007] EWHC 3061 (Ch) shortly before Christmas, on 20 December 2007. You can read the full decision here on BAILII.

Hunter owned the trade mark 'vet.local', which was registered in classes 9, 16, 41 and 42 for computer software, hardware and firmware. RX had created a computer system in which the term 'vet.local' appeared on computer screens in various ways. According to RX, the term 'vet.local' was buried within the workings of the system to such an extent that vet users were likely to only stumble upon it by chance, and knowledgeable system administrators were likely to know that the term did not relate to any goods or services. RX also submitted that 'vet.local' as used by it was not a sign that was inherently likely to denote trade origin. Hunter disagreed. In his view, users encountering the use of the term would associate it with his business or computer systems and services, or that they could see it as denoting quality.

In these proceedings RX sued Hunter for making unjustified threats of trade mark infringement, seeking summary judgment; Hunter counterclaimed for infringement. The specific issue to be determined in this application was whether the uses of the term 'vet.local' by RX infringed the trade mark. According to Hunter, since the use of 'vet'local' by RX was either an actual infringing use or at least an arguable one, there was a need for further factual investigation at a full trial.

Left: evidence of alleged infringement included this image of a computer screen, on which the word 'vet.local' appears in the dialogue box

Daniel Alexander QC allowed RX's application for summary judgment. In his view,

* where a sign was intended to act as an internal name for an aspect of a complex computer system, there being a perfectly credible explanation as to what it had been intended to mean, there was no serious basis for concluding that it would be taken to mean something different to that intended-- there being no credible reason why likely users should regard it as denoting anything else;

* it could not be seriously argued that any of the disputed uses of 'vet.local' was ever intended to bring to mind, or refer to, the trade origin of Hunter's software or his domain name. Noo was there any real prospect that any further evidence would emerge that would change that position;

* since RX's uses of the term 'vet.local' in its computer system did not infringe Hunter's trade mark, to the extent that threats had been made of proceedings for infringement of that mark, they were unjustified.

The IPKat thinks this must be right and is surprised that this case got as far as it did: it was really a no-hoper. Merpel says, considering that this was just a small-time application for summary judgment, the judge did a pretty good job in summarising the substantive law issues really well.

RX Works Veterinary Practice Management Systems here
Paul Hunter's Connect Computers here