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IP: Ne UK Case of Trademarks / Domains (fwd)
From: Dave Farber <farber () cis upenn edu>
Date: Mon, 06 Dec 1999 17:49:14 -0500
Date: Mon, 6 Dec 1999 14:38:22 -0800 (PST) From: "Ole J. Jacobsen" <ole () cisco com> To: David Farber <farber () cis upenn edu> This one is pretty interesting to say the least... Ole Ole J. Jacobsen Editor and Publisher The Internet Protocol Journal Tel: +1 408-527-8972 e-mail: ole () cisco com URL: http://www.cisco.com/ipj ---------- Forwarded message ---------- Date: Mon, 6 Dec 1999 10:03:05 -0800 (PST) From: df () macroberts co uk To: scotland () scotland isoc org Subject: Ne UK Case of Trademarks / Domains The English Chancery Court on 2 December issued a decision in relation to an alleged cybersquatter which we thought would be of interest to you. Regards David Flint ************************************************************* 152 Bath Street GLASGOW G2 4TB Tel: +44 141 332 9988 Fax: +44 141 332 8886 E-Mail: IPgroup () macroberts co uk PRESS RELEASE French Connection - is there Goodwill? * Summary judgment refused against domain name identical to trademark * Judge questions existence of "goodwill" * Public policy argument failed For several years (since February 1997) the French Connection clothing group has been running a marketing campaign using the abbreviation for "French Connection UK" - "FCUK"). This campaign has come in for some criticism on grounds of tastelessness - "FCUK" is close to the spelling of a similar expletive and complaints have been made (although not upheld) to the Advertising Standards Authority. Earlier this year French Connection were successful in a trademark infringement against the Young Conservatives who had sought to use the slogan "CFUK" (Conservative Future UK). In the current case - decided by the Chancery Court in England on 2 December 1999, a consultant - Mr Sutton - had registered the domain FCUK.com for his business. His defence was that he had registered the domain, which he accepted was a well known alternative to the use of the expletive and was used to circumvent internet filters put in place by ISP's, in order to give his consultancy business kudos and as he intended to set up a website for his business he hoped to attract passing internet users looking for pornography who had been attracted by the name. There was also an argument that he had offered to sell the name to the plaintiffs but this was not dealt with in the summary hearing. In his judgement the judge stated that he "found both sides arguments unpalatable in the extreme"; the plaintiffs had not satisfied the court that there was no real prospect of a defence to the claim for passing off succeeding (the trade mark issues would require to be resolved at trial). The defendant's argument that the claim should be dismissed on grounds of public policy was thought not to be as attractive as the defendant had hoped as he had "clearly sought to take advantage of the tasteless implications of the work "FCUK". However as the public policy argument would have to be considered at the trail in relation to the registration of the trademark "FCUK", the judge saw no reason why it could not also be considered at the trial in relation to passing off. David Flint, Partner in the IP & Technology Law Group of MacRoberts Solicitors comments, "This case is one of the first where a domain name registrant who has registered a name which is identical to a pre-existing trademark which is not also his name or for use other than in commerce has failed to obtain interim relief. The case is perhaps a unique one given that there are extraneous arguments in relation to the name itself. However, the case is an interesting one if it means that the courts will take a more balanced view of the rights of trade mark owners and domain registrants in determining infringement." For Further Information Contact: David Flint Tel: +44 141 332 9988 df () macroberts co uk Joanna Boag-Thomson joannab () macroberts co uk Fax: +44 141 332 8886 Elaine McKinney elainek () macroberts co uk **************************************************************8 David Flint Tel: +44 141 332 9988 IP & Technology Law Group Fax: +44 141 332 8886 MacRoberts, Solicitors 152 Bath Street E-Mail: df () macroberts co uk GLASGOW G2 4TB Scotland UK URL: http://www.macroberts.co.uk *************************************************************************** ****** NOTICE: This message is sent to you because you have requested it or because we believe that you would be interested in its contents. 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