When selecting a domain name in the UK, it is primarily registered trademark rights that dictate whether or not the domain name is available for use in trade and commerce, regardless of whether the domain name is available for registration. Whether or not the use of the domain name infringes a UK trade mark trade mark is another matter.
Suppose the same trade mark is owned and used by independent companies in the United States and the United Kingdom. The United States company might have a website, for example easyfashion.com, which may feature the trade mark "easy fashion". Does the appearance of the trade mark on the United States site infringe the trade mark registered in the United Kingdom?
Given the world wide accessibility of internet sites and the inevitability that, to return to the above example, the United States website will be viewed by internet users in the United Kingdom, courts have had to consider the question of whether the use of a trade mark on a foreign website infringes the trade mark registered in the United Kingdom.
The starting point for United Kingdom courts is the proposition that infringement in the United Kingdom requires the use of the sign in the course of trade in relation to goods or services in the United Kingdom.
Whether or not a foreign website uses a sign in the course of trade in the United Kingdom is a question of fact that a court must determine having regard to all the circumstances.
In the case of 1-800 Flowers Inc v Phonenames Ltd [2002] FSR 12 CA, Buxton LJ rejected the notion that simply placing a mark on a foreign website without more would constitute use in the course of trade in the United Kingdom.
Lord Justice Buxton, in reasoning that something more was required to constitute the requisite use, said:
"the very idea of "use" within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the Internet in response to direct encouragement or advertisement by the owner, the position may be different; but in such case the advertisement or encouragement in itself is likely to suffice to establish the necessary use"
An "active step" which goes beyond the mere placing of a mark on a website and which would result in a finding of use in the course of trade in the United Kingdom would include solicitation of customers and orders in the United Kingdom by the foreign website.
Courts will also look at whether the foreign website has an established trade and customer base in the United Kingdom. Whether or not a foreign website does have a United Kingdom customer base will not of itself determine the issue, but is certainly a relevant factor a court will consider in making its judgment.
Ultimately, the appearance of a mark on a foreign website will only be considered as use in the course of trade in the United Kingdom if, objectively speaking, the website aims at customers in the United Kingdom. Factors to be considered by courts when deciding this issue include whether there is any active solicitation of United Kingdom customers, the extent of the website's customer base and trade in the United Kingdom and whether any disclaimers or statements exist on the foreign website which prevent sales in the United Kingdom.
For more information please contact James Crighton via e-mail jcrighton@rollingsons.co.uk or by phone on 0207 611 4848.
