BACKGROUND

In Yell Ltd v Louis Giboin [2011] EWPCC 9 the Patents County Court found that use of the word mark TRANSPORT YELLOW PAGES and the “walking fingers” logo on a non- UK website infringed Yell Ltd’s well-known registered trade marks in the United Kingdom.

The Defendant operated two websites at www.zagg.eu and www.transport-yellow-pages.com, which consisted essentially of an online directory of transport businesses and other transport services. The Defendant used both the word mark YELLOW PAGES and a logo featuring the words TRANSPORT YELLOW PAGES on both websites.  

The Claimant alleged trade mark infringement and passing off in respect of its UK registrations for YELLOW PAGES and its “walking fingers” device mark.  

The Defendant argued that his use of the marks were not infringing as his websites were not directed at people in the United Kingdom and, further, neither YELLOW PAGES nor the “walking fingers” logo were distinctive because both were used all over the world in relation to directories unrelated to Yell.

THE DEFENDANT’S ARGUMENTS

Mr Giboin argued that in the United States both YELLOW PAGES and the “walking fingers” logo were generic, however he was unable to present any evidence of the use of the marks by businesses other than Yell in the United Kingdom. Whilst the marks might be descriptive of “directory” in the United States, in the Court’s view, that was clearly not the case in the United Kingdom.

Mr Giboin also argued that Yell’s goodwill and reputation in the marks did not extend to the internet. The judge, unsurprisingly, rejected this contention.

As for whether the Defendant’s websites were directed at the UK public, the Court found that the directory on the websites listed UK transport businesses, that the advertising services offered by the websites related to the United Kingdom and that the “Terms of Use” were stated to be governed by English law. Therefore, it was held that the average consumer in the United Kingdom would consider that the websites were directed at them.

REGISTERED TRADE MARK INFRINGEMENT

The Court found no infringement under Section 10(1) of the UK Trade Marks Act 1994 as the marks in question were not identical. In relation to Section 10(2) infringement, the Court found that the word TRANSPORT was purely descriptive.  

The Court found infringement under Section 10(3): the mark YELLOW PAGES clearly had the necessary reputation and TRANSPORT YELLOW PAGES gave rise to a link or association with the Claimant’s YELLOW PAGES mark in the mind of the average consumer. UK businesses encountering the websites would be likely to think that they were linked with the directories belonging to Yell.

PASSING OFF

HHJ Birss QC decided that evidence from one witness who had encountered Mr Giboin’s website at www.zagg.eu and thought that Yell was behind it, was sufficient to establish that the website was likely to deceive the public. Such a misrepresentation would be damaging to Yell’s business, the Judge said, and given that the websites were directed to the United Kingdom, passing off was established.  

COMMENT

This case serves as a further reminder that the widely held view that, the internet is a domain in its own right, subject to its own laws, where all of its content is, or should be, free, is a rather mistaken one.