MBNA IB, the world’s largest independent credit card issuer, applied to the Court for a temporary injunction preventing the Defendant, Stephen Freeman, from alleged passing off and infringement of its community trademark (consisting of a stylised representation of the letters “MBNA”) by the use of the domain name www.mbna.co.uk.
Who: MBNA International Bank ("MBNA IB") antional Bank ("MBNA IB") and Stephen Freeman
When: Late 2000
Where: Chancery Division of the High Court, London
What happened:
MBNA IB, the world's largest independent credit card issuer, applied to the Court for a temporary injunction preventing the Defendant, Stephen Freeman, from alleged passing off and infringement of its community trademark (consisting of a stylised representation of the letters "MBNA") by the use of the domain name www.mbna.co.uk. They were unsuccessful.
Mr Freeman defended, saying his business was marketing banners for net advertising and that it was difficult to think up a better set of initials than "MBNA" that described his business. His business and the claimant's were quite different, he said, and there was no likelihood of damaging confusion. The Court agreed. It is always difficult to register a non-acronymic set of initials as a trade mark, and clearly MBNA IB case was only able to do so by use of a stylised representation of the initials. As the marks in question were therefore not identical and the products on which they were being used were not the same, MBNA IB's case in trademark infringement (as well as passing off) depended on showing likely and damaging confusion as to whether the Defendant's website was commercially linked with MBNA IB or its website MBNA.com. The Judge held that those who might want to use Freeman's services were likely to be relatively sophisticated (advertisers take note) and less likely to be confused between the parties' businesses. Even if they were, he held that as Freeman's other businesses all looked pretty pukka, there was little risk of the goodwill in the Claimant's MBNA brand suffering.
Why this matters:
The matter must go to full trial (unless settled beforehand) for the Court to form a definitive view on the legal merits of MBNA IB's case. This judgement, however, shows that in the absence of "smoking gun" evidence of cybersquatter-type bad faith, for instance by way of the Defendant seeking to sell the domain name in question to the Claimant, it is by no means a foregone conclusion that established trademark owners will defeat smaller fry who can tell a persuasive story as to why the URL in question was chosen. The case also shows the vulnerability of brands consisting of prima facie indistinctive sequences of initials.
