A recent decision of a United Kingdom court considered whether the defendant’s use of the plaintiff’s trade-marks on the defendant’s websites, allegedly operating from Florida, constituted “use” of the trade-marks in the United Kingdom.
The plaintiff distributes YELLOW PAGES directories in the UK. It also operates an on-line directory service and a telephone directory service. The plaintiff contended that the defendant had infringed its registered trade-marks and committed acts of passing off.
The heart of the dispute related to two websites. The defendant did not deny that it used the plaintiff’s trade-marks on its website pages but asserted that the websites were not UK based and not within the jurisdiction of the UK courts. The defendant said they operated and conducted transactions in the United States. The trade-marks in issue were generic in the United States but validly registered in the United Kingdom.
The Approach of the UK Courts
There have been a number of UK cases dealing with this issue which have established the following principles. First, the mere fact that a website can be accessed anywhere in the world does not mean, for trade-mark purposes, that the law should regard trade-marks referenced on the site as being used everywhere in the world. It all depends on the circumstances, particularly the intention of the website owner and what the reader will understand if they access the site. For example, if a fishmonger in a town in England listed wares and prices on a website for local delivery it could not be said that the fishmonger was trying to sell fish to the whole world or even the whole country. A customer from another country who came across the site would readily determine that it was not for them and move on.
Second, the idea of “use” within a geographical area requires some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring a mark into the area. However, if persons in the United Kingdom seek a mark on the Internet in response to direct encouragement or advertisement by the owner of the mark, the result may be different. In such a case the advertisement or the encouragement by itself is likely to be sufficient to establish the necessary use.
In summary it is clear that placing a mark on the Internet from a location outside the UK can constitute use of that mark in the UK. The Internet is a powerful means of advertising and promoting goods and services within the UK even though the provider of such goods and services is based abroad.
The fundamental question is whether or not the average consumer of goods or services in issue within the UK would regard the advertisement and the website as being aimed or directed at them. All material circumstances must be considered, including the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser’s intention.
After considering all of the relevant evidence, the Trial Judge concluded that the average consumer of the services in issue within the UK would regard the websites as being directed at them and the plaintiff’s claims for infringement and passing off were allowed.
To date this particular issue has not yet been considered by a Canadian court. However, the UK approach reflected in this decision has been followed in a number of other countries and will be persuasive in Canada.