800-Flowers sets precedent on Web-related trademark use
The Court of Appeal's recent judgment in the 800-Flowers Case sets out for the first time the requirements for registration of a trademark based on use of the mark on the Internet in the United Kingdom.
A large US floral telemarketing company, 1-800 Flowers Inc, sought to register the 800-FLOWERS mark in the United Kingdom. Phonenames Limited opposed the application on the basis that members of the public seeing the mark would confuse it with Phonenames' alphanumeric freephone telephone number '0800 FLOWERS'.
Any person applying for a UK trade or service mark registration must either use, or have an honest intention to use, the mark in the United Kingdom in relation to the goods and/or services covered by the application. 1-800 Flowers Inc claimed that it uses the mark in the United Kingdom since members of the UK public can use its services by accessing its website. One of the points in issue before the court was whether this internet use was sufficient to prove that 1-800 Flowers Inc was using 800-FLOWERS as a mark in the United Kingdom.
Lord Justice Buxton ruled that use in the United Kingdom for the purposes of trademark registration requires an "active step [to be taken by the user] that goes beyond providing facilities that enable others to bring the mark into the area." He commented that merely placing the mark on the Internet from a location outside the United Kingdom and waiting in the hope that someone will download it does not in itself constitute use of the mark on the Internet. However, provided there was "direct encouragement or advertisement by the owner of the mark", this was likely to be sufficient to establish the necessary use.
Since there had been no active step, direct encouragement or advertisement by 1-800 Flowers Inc to attract members of the UK public to access its site, and there was no evidence of any orders having been placed from the United Kingdom, there was no use of the trademark in the United Kingdom. This prevented the trademark application from being accepted.
This judgment will have an impact on both the registrability and infringement of UK trademarks. It shows that in order for a UK trademark to be registered based on use of the mark on the Internet, there must be some active promotion of, or at least plans to promote, the website to members of the UK public.
The judgment will also impact on trademark infringement cases since, in order to establish infringement of a mark, it must be shown that the infringer is using the mark in the United Kingdom. If the website operated by an alleged infringer is merely passive, it is likely that UK courts will decide that there is no infringement.
Nigel Wildish, Field Fisher Waterhouse, London
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