Court considers when website falls within UK court’s jurisdiction

United Kingdom
In Yell Limited v Giboin ([2011] EWPCC 9, April 4 2011), the Patents County Court has considered when a website falls within a UK court’s jurisdiction for the purposes of trademark infringement and passing off.
 
Yell Limited, the company behind the famous Yellow Pages directories, brought proceedings in the UK Patents County Court against a Mr Giboin and two related corporate entities (described as his ‘corporate alter ago’) for acts of passing off and trademark infringement in relation to Yell’s well-known word mark YELLOW PAGES and the ‘walking fingers’ device mark.
 
Yell's directories are available in paper form, online via the website at 'yell.com' and as a telephone directory service. The defendants operated websites (including 'transport-yellow-pages.com') through which they ran a database and directory of transport business and services, and used both of Yell's marks.
 
Yell argued that the defendants’ use of its marks infringed Sections 10(1), 10(2), and 10(3) of the Trademarks Act 1994 (and equivalent provisions of the EU Trademarks Directive (2008/95/EC)). Further, Yell argued that the defendants’ websites were passing off by virtue of using the marks.
 
The defendants did not deny the nature of the activities conducted on their websites or that they had used Yell's marks. Their principal counterargument was that the websites were outside the court’s jurisdiction, since they were not UK-based. In particular, they relied on the following factors:
  • the domain names had '.eu' and '.com' extensions (instead of '.co.uk');
  • they operated and conducted transactions abroad;    
  • the money for the services offered on either website was paid to an entity abroad;
  • the websites, the database and directory had been created abroad; and
  • the registrants were foreign entities.
The court reviewed the relevant case law on whether the use of a trademark on the internet constitutes use of that mark in the United Kingdom, and concluded that the websites were directed to the United Kingdom. It relied in particular on Kitchin J’s dictum in Dearlove v Combs ([2007] EWHC 375 (Ch)), whereby the "fundamental question is whether or not the average consumer of the goods or services in issue within the United Kingdom would regard the advertisement and site as being aimed and directed at him" - or, in the Patents County Court’s words, "what matters is how the site looks and functions when someone in the United Kingdom interacts with it".
 
Referring to an analogy adopted in an earlier case, one should look at internet browsing more as "the user focusing a super-telescope into the site concerned" (Euromarket Designs Inc v Peters ([2001] FSR 20, at 25)). Once the average consumers have focused their telescope into the site, are there any indicators that would make them think that the site was directed at them?
 
On the facts, the court found the following indicators, among others:

  • the websites included a representation of the Union Jack;
  • the default search country was the United Kingdom;
  • the directory service was, to a material extent, a UK directory service;
  • the online services could be bought from the United Kingdom (which was held to be more significant than the fact that the related payments were made to an entity abroad);
  • the businesses advertised on the websites were offering services linked to the United Kingdom; and
  • the websites used Yell's marks, which are very familiar to UK-based customers.
For the same reasons, the court concluded that, for the purposes of passing off, the misrepresentation made by the defendants was directed to members of the public in the United Kingdom, who would associate the sites with Yell. The court found the defendants liable both for trademark infringement (under Sections 10(2) and 10(3)) and for passing off.
 
Interestingly, the defendants also argued that Yell's marks were not distinctive, as they are used extensively everywhere in the world. They referred to a US judgment, BellSouth Corporation v DataNational Corporation (60 F3d 1565), where it was held that AT&T’s ‘walking fingers’ device had become generic through common usage in the United States. The court rejected the defendants’ argument on the basis that "just because a term is generic in one territory does not mean that, by definition, it is generic in another". The onus was on the defendants to show that the distinctiveness of the marks in the public's mind in the United Kingdom had been eroded, and they failed to do so.
 
Cam Gatta, D Young & Co LLP, London

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