Rx Works Limited v Hunter  EWHC 3061 (Ch) concerned a dispute of the use of the term “vet.local”. “Vet.local” is a trade mark registered by Hunter in classes 9, 16, 41 and 42, for, amongst other things, computer software, hardware and firmware. Hunter claimed that the uses made of the term vet.local in computer systems sold by Rx Works amounted to trade mark infringement. RX Works denied this, noting that the use of vet.local in its software was not trade mark use as the term was hidden in the depths of the system and was not easily accessed by end users, nor was it used in a trade mark sense as it did not denote origin.
Having received cease and desist letters from Hunter, Rx Works issued proceedings against Hunter for unjustified threats of trade mark infringement and sought summary judgment in the case.
Having reviewed the relevant statutory provisions, Daniel Alexander QC, sitting as a deputy judge of the Chancery Division, allowed the application for summary judgment following the formulation of the test for determining infringement, as contained in Céline SARL v Céline SA (C- 17/06), in cases under Article 5(1) of the Directive. The judge summarised that the test requires four conditions to be fulfilled, namely that the use of the sign:
- Must be in the course of trade
- Must be without the consent of the proprietor of the mark
- Must be in relation to goods or services that are identical to those for which the mark is registered; and
- Must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumer the origin of the goods or services.
In analysing the uses made of the term vet.local in goods commercialised by Rx Works, the judge found that the first three conditions of the test were fulfilled, and focused his decision on whether the uses affected, or were liable to affect, the functions of the trade mark. On this point, the judge highlighted that vet.local was a term likely to arise in the context of the software provided by Rx Works to veterinary practices only when specific actions by a computer user or system administrator were undertaken. In particular, the term could have been seen when searching for a particular computer file, or, occasionally, when saving files. It could also have appeared as the name for a local domain used to identify the computer or when running a diagnostic programme.
Thus, it emerged that vet.local was in fact “buried in the workings of the system”. Accordingly, users would have come across it only by chance, while knowledgeable system administrators, if they were to see it, would have known to what it referred and would have not been confused. In addition, the sign was not inherently likely to denote trade origin. On the contrary, it would have been taken as the name of an internal domain and associated folders.
In summary, vet.local was a sign intended to act as an internal name for an aspect of the complex computer system commercialised by Rx Works and, while a credible explanation was put forward that vet.local was intended to mean only that, there was not a credible explanation for why it should have been regarded by likely users as denoting anything else. According to this assessment, the judge was satisfied that the uses in question were not affecting any of the functions of the trade mark. This meant that the fourth condition of Céline was not satisfied. In the light of these findings, the judge held that threats were unjustified.