Dublin-based retailer Crate & Barrel (C&B) placed an ad in a UK-based homes magazine with an Irish circulation.
Topic: Trade marks
Who: Euromarket Designs, Inc, Peters & Anor
When: July 2000
Where: Chancery Division of the High Court, London
Dublin-based retailer "Crate & Barrel" ("C&B") placed an ad in a UK-based "homes" magazine with an Irish circulation. The ad carried an international telephone number and a website address, while the website, accessible from the UK and elsewhere, naturally carried the Crate & Barrel name. Quite independently it seems, US-based Euromarket Designs ("EMD") had built up a successful chain of homeware and furniture shops in the US and registered Crate & Barrel as a trade mark in the UK.
Neither business did any material trade in the UK, but EMD sued C&B for trade mark infringement in Chancery in London and applied for a quick, "summary judgement," arguing that there was no arguable defence to their claims.
Was "Crate & Barrel" being used by C&B in the UK? The Court thought it unlikely the website could on its own amount to such use as it related only to the shop in Ireland and did not actively seek customers in the UK or for that matter elsewhere. Regarding the magazine ad, despite the international telephone number and the UK circulation, the Court took into account its likely purpose and effect and concluded that this was not material use in the UK. Jacob J also considered that C&B would have a reasonable prospect of running successfully a defence available to those using their own name in good faith and of persuading the court at trial that the EMD registration of Crate & Barrel was invalid on grounds of lack of use by EMD in the UK. So EMD were denied their summary judgement and must now go to full trial on all the issues.
Why this matters:
This is not the first UK judgment in which a robust view has been taken as to whether use of a brand on a website is material use for the purposes of the Trade Marks Act 1994 when the site is not specifically directed at the UK. Perhaps we are witnessing a trend towards the US "purposeful availment " doctrine by which US state courts have refused to accept jurisdiction unless there is clear evidence that business in the state in question is being actively sought. The decision in relation to the magazine advertisement is also encouraging for advertisers looking to use "spillover" media footprints, if a little difficult to reconcile with the inclusion of an international telephone number in the ad. No doubt EMD will be seeking full discovery of C&B’s sales records over the relevant period to see if any mail order sales were effected to UK residents which might have been driven by the press insertion. As for the "own name" defence, this sounds superficially fair, though hardly encouraging for those relying on trade mark searches before choosing a new brand. No wonder that in the relevant jurisdictions prudent searchers conduct "common law" searches also. These target trade and telephone directories, the internet and other sources likely to reveal use of brand names which, though they might not be registered trade marks, could still, because of rules such as that relating to "own name" use, cause a new product launch serious difficulty.