In Wasabi Frog Ltd v Miss Boo Ltd [2009] EWHC 2767 (Ch), Mr Justice Warren granted an interim injunction to Wasabi Frog, proprietor of the womenswear website boohoo.com, to restrain a new website from retailing female fashionwear under the name Miss Boo.

BACKGROUND

Wasabi Frog, an online retailer of women's fashion, has traded since November 2006 through the website boohoo.com and by reference to the mark BOOHOO. Its target market comprises young women aged 17 to 25 and it has built a reputation as a vibrant, glamorous but affordable brand.

Wasabi Frog had registered BOO, BOOHOO and BOOHOO.COM as Community trade marks (CTMs) in respect of cosmetics, clothing, accessories and footwear; 80 per cent of the clothing and 30 per cent of the footwear sold through the website is branded boohoo.com. Wasabi Frog also owns a number of domain names including the words boohoo and missboohoo, all of which redirect to the main website at boohoo.com.

On 1 September 2009, Miss Boo launched a website at www.missboo.co.uk, selling women's clothing which was similar to that of Wasabi Frog but, according to Wasabi Frog, of cheaper quality. Miss Boo's director, Gulfraz Mohammed, gave evidence that the name had been chosen to include "Miss" because the range was targeted at young women and "Boo" because this was a word for loved ones in popular culture. Miss Boo had carried out searches prior to selecting the name and had found no companies of the name, no website and, when it sought registration as a UK trade mark, the UK Intellectual Property Office had informed certain companies, but not Wasabi Frog. The reason for this omission was not clear.

As part of its effort to limit any damage caused to its brand by Miss Boo, Wasabi Frog purchased "Miss Boo" as a Google Adword. Google Analytics Reports showed that 15 per cent of the traffic to the Boohoo.com website was redirected from users who had searched for Miss Boo, representing the fourth largest source of traffic to the site.

Wasabi Frog applied to restrain Miss Boo from trade mark infringement and passing off, seeking an interim injunction.

DECISION

Warren J accepted Wasabi Frog's submission that Miss Boo had been aware of the boohoo.com website when it launched its business, but noted that whether Miss Boo's conduct could be said to be calculated to pass off its goods as those of Wasabi Frog must be judged objectively.

Warren J accepted that Wasabi Frog had goodwill and reputation in the marks BOOHOO and BOOHOO.COM, but held that the same could not be said of its BOO mark, although he acknowledged that it had registered this mark as a CTM.

The judge accepted Mr Mohammed's evidence that the target market of the two websites were young girls who were "very, very savvy" when it came to fashion. However, the judge noted that he did not need to determine the matter of confusion one way or the other, for the purposes of this application, merely to determine whether or not there was a triable issue. Having heard evidence of an actual incidence of confusion, in the form of an events promoter who contacted Wasabi Frog in an effort to sell advertising space at one of its events and, in doing so, twice referred to Wasabi Frog as Miss Boo, he held that if somebody like that could be confused, even a "very, very savvy" young woman might be confused. Warren J also found the evidence relating to the Miss Boo Adword gave rise to an arguable case.

Warren J held that damages would not be an adequate remedy for Wasabi Frog, since Miss Boo was a new and impecunious business. On the other hand, he considered that although damages would not be a complete remedy for Miss Boo, they would prove adequate if it transpired that an interim injunction had been wrongly granted. Miss Boo had not been trading for long enough to build up significant reputation in the name and could change its name with a loss only of the investment it had made to date in advertising. Significantly, its stock, which was not branded Miss Boo, could still be sold, whatever the outcome of this dispute.

COMMENT

As in the recent Strip case, the balance of convenience will generally favour an established business over a newcomer which can usually be compensated with monetary damages, since it has little more to lose than the money it has invested in launching a new brand. The existing business, on the other hand, typically has higher stakes, with the risk of damage to the brand resulting from confusion on the part of its customers.

It is interesting to see a claimant using keywords to its advantage, in this case not only registering the Miss Boo as a keyword to limit any diversion of sales from Wasabi Frog to Miss Boo, but also using the statistical report generated by Google as evidence of confusion.