When Jacob J started going on in Chancery about telescopes and the Internet, what exactly was he on about?
Who: Euromarket De Who: Euromarket Designs Inc v Peters and Crate & Barrel Ltd
Where: Chancery Division of the High Court London
When: July 2000-fully reported in April 2001
The owners ("CBL") of a Dublin household goods and furniture shop "Crate & Barrel" put up a website at crateandbarrel-ie.com. Pictures of various items sold in the shop appeared, but by all accounts it was not possible to buy on-line at the relevant time. They also put a single page colour advertisement in the UK’s Homes & Gardens. The claimant Euromarket Designs Inc ("EDI") had a chain of household goods and furniture stores in the US and had UK and CTM registrations of the mark "Crate & Barrel" covering various household goods items in class 21. EDI sued CBL in England for infringement of its UK trade mark. EDI sought summary judgement on the claim, arguing the case was so open and shut there was no need for a full trial.
The court looked at whether the website and Homes & Gardens use of the brand in question was use of the kind caught by the infringement provisions of the UK Trade Marks Act. In other words was it "use in the course of trade" in the UK. There was no evidence before the Court that CBL had any customers resident in the UK.
Was use of the brand on the website an infringement? "Not necessarily" said Jacob J. He likened the internet rather quaintly to a powerful telescope enabling users to visit CBL’s shop in Dublin. There was here no attempt to encourage, a la Amazon, on-line ordering of goods that could be delivered by mail order. Prices were never quoted in pounds sterling and now appeared only in Irish punts. As the judge was equally unimpressed with EDI arguments on the Homes & Gardens advertisement the summary judgement application was refused and the case now goes to full trial.
Why this matters:
UK case law on this topic is now taking on the shape of that in the US, where the so-called doctrine of "purposeful availment" is applied. Here the court does not automatically assume that material on a website is, as was colourfully suggested by EDI’s counsel, putting a tentacle onto every screen on which it can be viewed. In each case one analyses the defendant’s conduct in order to establish just how actively, if at all, it reached out to users and sought their custom. Though only on the question of summary judgement, this verdict is a relief for brand owners who wish to put their brand on-line but may not have registered it in every single country in the world.