Phone4U.co.uk Court of Appeal Decision

Beasty · 19-05-2006, 02:35:17 PM

This was being dealt with on another thread - but I think it merits one of its own now that the decision has been handed down. Here's the link to it:

http://www.bailii.org/ew/cases/EWCA/Civ/2006/244.html

Jac · 19-05-2006, 03:38:58 PM

Quote:

Originally Posted by Beasty

This was being dealt with on another thread - but I think it merits one of its own now that the decision has been handed down. Here's the link to it:

http://www.bailii.org/ew/cases/EWCA/Civ/2006/244.html

I've only had the briefest of looks but it seems the appeal by Phones4U was allowed (on passing off) and they win?

Clause 81. In the result I would allow the appeal on passing off but dismiss it on trade mark infringement.

Regards
James Conaghan
[PAB Member]

Beasty · 19-05-2006, 03:50:18 PM

Quote:

Originally Posted by Jac

I've only had the briefest of looks but it seems the appeal by Phones4U was allowed (on passing off) and they win?

Clause 81. In the result I would allow the appeal on passing off but dismiss it on trade mark infringement.

That's right. It does not say so on the Judgment - but the remedy sought was almost certainly transfer of the domain(s) - which I imagine will have been granted.

olebean · 19-05-2006, 03:58:04 PM

Quote:

Originally Posted by Jac

I've only had the briefest of looks but it seems the appeal by Phones4U was allowed (on passing off) and they win?

Clause 81. In the result I would allow the appeal on passing off but dismiss it on trade mark infringement.

Regards
James Conaghan
[PAB Member]

Jac

They did lose on passing off

Quote:

leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff 's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff

It confirms that co-existance can occur provided that they are different goods or services

He should have been a web designer!

Jac · 19-05-2006, 04:02:19 PM

Quote:

Originally Posted by Beasty

That's right. It does not say so on the Judgment - but the remedy sought was almost certainly transfer of the domain(s) - which I imagine will have been granted.

I also see at the bottom of Clause 7 that it says:

"In April or May (2000) Mr Heykali offered to sell the domain name for a large sum of money: he untruthfully said he had been offered �100,000 for it by a third party."

That will undoubtedly have gone against him as (IMHO) it might have done in a DRS.

Regards
James Conaghan
[PAB Member]

Jac · 19-05-2006, 04:08:25 PM

Quote:

Originally Posted by olebean

It confirms that co-existance can occur provided that they are different goods or services

Yes, I did agree with that in a previous thread (after looking it up) that co-existence can occur in TMs as long at they are as you said different goods or services.

Quote:

Originally Posted by olebean

He should have been a web designer!

It is highly possible he may wish he had been when he sees his final legal bill.

Regards
James Conaghan
[PAB Member]

olebean · 19-05-2006, 04:19:22 PM

It will be interesting to find out what the final cost is and whether he has to pay phones4u legal bill

Jac · 19-05-2006, 04:40:11 PM

Quote:

Originally Posted by olebean

It will be interesting to find out what the final cost is and whether he has to pay phones4u legal bill

Losing his ecommerce business ain't fun either!

Regards
James Conaghan
[PAB Member]

domaingenius · 19-05-2006, 04:55:56 PM

This case is going to have PROFOUND knock on effects on a lot of domainers and I can see a number of cases that will now be taken on the strength of it.
Again this shows that the "old school" are not going to lie down and let the "new school" take the business away from them, they will also have the backing of many of the "old school" Judges who have many financial interests in conventional business. This case will now be referred to again and again.

Addition. I have read it a bit more now, and in fact some of the Judgment may well be helpful to domainers, in that it agreed that Trademark was NOT infringed simply by using the same words as the trademark. This is useful, and indeed was something has been mentioned on this forum before, that in the DRS some complainants are flouting the strict TM approach by saying that they have a TM that is the same as the domain name, even though in fact on close inspection the TM was ONLY granted because the words were made distinctive by colours or other variants of the letters. This case should be taken in to account in future DRS's otherwise what is point of DRS if it only afterwards is going to end up in Court anyway because they ignored case law ?.

DG

scooter · 19-05-2006, 06:59:50 PM

Why did they go to all the expense of going to court?

Why did they not use DRS first? (A lot cheaper) and in the unlikely scenario they had lost, they could then go to court.

???

19-05-2006, 02:35:17 PM	#1 (permalink)
Beasty Join Date: Jan 2006 Posts: 617 No Classified Ratings Domain Trader Rating: (100% / 1)	Phone4U.co.uk Court of Appeal Decision This was being dealt with on another thread - but I think it merits one of its own now that the decision has been handed down. Here's the link to it: http://www.bailii.org/ew/cases/EWCA/Civ/2006/244.html

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19-05-2006, 04:19:22 PM	#7 (permalink)
olebean Join Date: Nov 2005 Location: Rarotonga Posts: 2,291 No Classified Ratings Domain Trader Rating: (100% / 1)	It will be interesting to find out what the final cost is and whether he has to pay phones4u legal bill

19-05-2006, 04:55:56 PM	#9 (permalink)
domaingenius Join Date: Dec 2004 Posts: 1,423 No Classified Ratings Domain Trader Rating: (100% / 1)	This case is going to have PROFOUND knock on effects on a lot of domainers and I can see a number of cases that will now be taken on the strength of it. Again this shows that the "old school" are not going to lie down and let the "new school" take the business away from them, they will also have the backing of many of the "old school" Judges who have many financial interests in conventional business. This case will now be referred to again and again. Addition. I have read it a bit more now, and in fact some of the Judgment may well be helpful to domainers, in that it agreed that Trademark was NOT infringed simply by using the same words as the trademark. This is useful, and indeed was something has been mentioned on this forum before, that in the DRS some complainants are flouting the strict TM approach by saying that they have a TM that is the same as the domain name, even though in fact on close inspection the TM was ONLY granted because the words were made distinctive by colours or other variants of the letters. This case should be taken in to account in future DRS's otherwise what is point of DRS if it only afterwards is going to end up in Court anyway because they ignored case law ?. DG

19-05-2006, 06:59:50 PM	#10 (permalink)
scooter Join Date: Apr 2006 Posts: 1,506 No Classified Ratings Domain Trader Rating: (100% / 21)	Why did they go to all the expense of going to court? Why did they not use DRS first? (A lot cheaper) and in the unlikely scenario they had lost, they could then go to court. ???