IP: Ne UK Case of Trademarks / Domains (fwd)

[Dave Farber <farber@cis.upenn.edu>]

>Date: Mon, 6 Dec 1999 14:38:22 -0800 (PST)
>From: "Ole J. Jacobsen" <ole@cisco.com>
>To: David Farber <farber@cis.upenn.edu>
>
>
>This one is pretty interesting to say the least...
>
>Ole
>
>
>Ole J. Jacobsen
>Editor and Publisher
>The Internet Protocol Journal
>Tel: +1 408-527-8972
>e-mail: ole@cisco.com
>URL: http://www.cisco.com/ipj
>
>
>
>---------- Forwarded message ----------
>Date: Mon, 6 Dec 1999 10:03:05 -0800 (PST)
>From: df@macroberts.co.uk
>To: scotland@scotland.isoc.org
>Subject: Ne UK Case of Trademarks / Domains
>
>The English Chancery Court on 2 December issued a decision in relation to
>an alleged cybersquatter which we thought would be of interest to you.
>
>Regards
>
>David Flint
>
>*************************************************************
>152 Bath Street
>GLASGOW
>G2 4TB
>Tel: +44 141 332 9988
>Fax: +44 141 332 8886
>E-Mail: IPgroup@macroberts.co.uk
>
>PRESS RELEASE
>
>French Connection - is there Goodwill?
>
>* Summary judgment refused against domain name identical to trademark
>
>* Judge questions existence of "goodwill"
>
>*       Public policy argument failed
>
>For several years (since February 1997) the French Connection clothing
>group has been running a marketing campaign using the abbreviation for
>"French Connection UK" - "FCUK"). This campaign has come in for some
>criticism on grounds of tastelessness - "FCUK" is close to the spelling of
>a similar expletive and complaints have been made (although not upheld) to
>the Advertising Standards Authority.  Earlier this year French Connection
>were successful in a trademark infringement against the Young
>Conservatives who had sought to use the slogan "CFUK" (Conservative Future
>UK).
>
>In the current case - decided by the Chancery Court in England on 2
>December 1999, a consultant - Mr Sutton - had registered the domain
>FCUK.com for his business. His defence was that he had registered the
>domain, which he accepted was a well known alternative to the use of the
>expletive and was used to circumvent internet filters put in place by
>ISP's, in order to give his consultancy business kudos and as he intended
>to set up a website for his business he hoped to attract passing internet
>users looking for pornography who had been attracted by the name.
>
>There was also an argument that he had offered to sell the name to the
>plaintiffs but this was not dealt with in the summary hearing.
>
>In his judgement the judge stated that he "found both sides arguments
>unpalatable in the extreme"; the plaintiffs had not satisfied the court
>that there was no real prospect of a defence to the claim for passing off
>succeeding (the trade mark issues would require to be resolved at trial).
>The defendant's argument that the claim should be dismissed on grounds of
>public policy was thought not to be as attractive as the defendant had
>hoped as he had "clearly sought to take advantage of the tasteless
>implications of the work "FCUK". However as the public policy argument
>would have to be considered at the trail in relation to the registration
>of the trademark "FCUK", the judge saw no reason why it could not also be
>considered at the trial in relation to passing off.
>
>David Flint, Partner in the IP & Technology Law Group of MacRoberts
>Solicitors comments, "This case is one of the first where a domain name
>registrant who has registered a name which is identical to a pre-existing
>trademark which is not also his name or for use other than in commerce has
>failed to obtain interim relief. The case is perhaps a unique one given
>that there are extraneous arguments in relation to the name itself.
>However, the case is an interesting one if it means that the courts will
>take a more balanced view of the rights of trade mark owners and domain
>registrants in determining infringement."
>
>For Further Information Contact:
>David Flint     Tel: +44 141 332 9988
>df@macroberts.co.uk
>
>Joanna Boag-Thomson
>joannab@macroberts.co.uk        Fax: +44 141 332 8886
>
>Elaine McKinney
>elainek@macroberts.co.uk
>
>**************************************************************8
>David Flint                                  Tel: +44 141 332 9988
>IP & Technology Law Group       Fax: +44 141 332 8886
>MacRoberts, Solicitors
>152 Bath Street                          E-Mail: df@macroberts.co.uk
>GLASGOW G2 4TB
>Scotland UK                              URL: http://www.macroberts.co.uk
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