In a trade mark and domain name dispute between online retailers, Boohoo was granted an interim injunction against Miss Boo. Seriously. Another feature of the case was the use of Google Ad Words and Google Analytics to provide evidence of confusion. Mark Smith reports.
Who: Wasabi Frog Ltd v. Miss Boo Ltd and another
When: 4 November 2009
Where: High Court of Justice, London
Law stated as at: 2 December 2009
The High Court has granted an interim injunction against Miss Boo, an online retailer of women's fashion clothing, in a dispute surrounding the use of various trade marks and domain names. Interestingly, the applicant provided evidence of confusion using the Google Ad Words application and Google Analytics, which the judge in the case found persuasive.
Wasabi Frog Ltd (the "Claimant") is an online retailer of fashionable women's clothing, shoes and accessories. It has traded under and by reference to the names BOOHOO and BOOHOO.COM since November 2006 and is the registered proprietor of the Community trade marks BOO, BOOHOO and BOOHOO.COM which are all registered in class 25 (clothing).
The Claimant's goods are sold via the domain name www.boohoo.com, but it is the registered proprietor of several related domain names, including www.missboohoo.com and www.missboo.co.uk These were registered to preserve the Claimant's position in the event that it wanted to branch out into selling teenagers' fashion online. As of the end of September 2009 approximately 400,000 customers had purchased goods from the Claimant in the previous twelve months and secure sales via the website totalled between around £30,000 and £60,000 every day. The Claimant has won a number of awards and independent surveys indicate that in the online retail market it competes against household names such as Next and TopShop.com.
Miss Boo Ltd, under the control of its director Gulfraz Mohammed (together the "Defendants"), recently launched a competing business selling women's clothing, shoes and accessories online, trading under and by reference to the names MISS BOO and MISSBOO.CO.UK. The Claimant discovered the Defendants' website almost immediately after it was launched around 1 September 2009. The Defendants sold their clothes via the domain name www.missboo.co.uk and traded in the same marketplace and the same demographic and target customer base as the Claimant, advertising in the same magazines and selling similar women's fashion clothing.
Boohoo takes action
The Claimant brought an action to restrain the Defendants from trading under or by reference to the marks or domain names "Miss Boo", "miss.boo.co.uk" or the Claimant's marks or domain names "boohoo", "boohoo.com" and "boo" or any colourably similar marks or domain names by way of an interim injunction and sought to have the Defendants' website at www.missboo.co.uk disabled.
To succeed in an application for an interim injunction the claimant must show that (1) there is a triable issue; (2) that an award of damages will not represent adequate compensation; and (3) that the balance of convenience favours the grant of an injunction.
The Claimant in this case chose to put forward its case on the basis of both trade mark infringement and passing off.
Trade mark infringement
Under Article 9(1)(b) of the Council Regulation of 20 December 1993 on the Community Trade Mark (40/94/EEC) a claim for infringement of a Community trade mark (CTM) requires the claimant to establish that the defendant is using in the course of a trade without the claimant's permission a sign which is identical to or similar to the CTM in relation to goods or services which are similar to those which the CTM is registered against, and where because of these similarities there exists a likelihood of confusion of the part of the public. Likelihood of confusion includes likelihood of association between the sign being used by the defendant and the claimant's CTM.
The law relating to the tort of passing off is derived from the principle that "a man is not to sell his own goods under the pretence that there are the goods of another man". To establish a classic case of passing off a claimant must prove (1) goodwill or reputation in its relevant goods or services; (2) a misrepresentation by the defendant to the public (whether intentional or unintentional) that will lead or be likely to lead the public to think that his goods and services are those of the claimant; and (3) damage to the claimant by reason of that misrepresentation.
Note that the judge in this case emphasised that mere confusion is not enough to establish passing off, and that the Defendants' conduct had to be objectively judged to be calculated to pass off their goods as the goods of the Claimant. This would not require fraud on the part of the Defendants, only that the reasonably foreseeable consequence of their actions would be to pass off their goods as those of the Claimant.
Evidence of confusion
The Claimant relied on two matters to demonstrate that actual confusion had taken place before the date of the hearing:
1. a Mr Derrick Burns from Kommando Ltd, a company working in brand promotion, had contacted the Claimant by e-mail to discuss promoting the boohoo brand, but twice referred to the Claimant as "Miss Boo";
2. in order to restrict the potential damage to its business, once the Claimant learned of the Defendants' activities, the Claimant purchased the words "MISS BOO" as Google Ad Words. The result of this was that when an internet user entered the words "MISS BOO" into the Google search engine, the Claimant's advertisement for www.boohoo.com would appear in the sponsored search results. Google Analytics reports stated that this sponsored link was the 4th largest source of traffic to the boohoo.com website with a "click through" rate of 14.89%.
In addition to these matters the Claimant referred to the importance of words in the context of online shopping, because it is words which lead customers to the shop, and argued that in both the "Miss Boo" and "boohoo" marks the emphasis was on the word "boo". On that basis the Claimant suggested that a consumer could easily believe that "Miss Boo" was connected with the Claimant but aimed at a slightly different market, particularly given the high distinctiveness of the marks "BOOHOO", "BOOHOO.COM" and "BOO" in the retail marketplace for clothing, footwear and accessories.
The judge held that the Claimant had a strongly arguable case for trademark infringement and, although passing off presented more difficulties, a well arguable case there as well, and granted an interim injunction against the Defendants.
Damages were not felt to be an adequate remedy as the Defendants had few assets and the Claimant's business could suffer irreparable harm if, as alleged by the Claimant, the Defendants' goods were of an inferior quality. He thought it was almost inevitable that the Defendants would benefit unfairly from business which should have gone to the Claimant.
Why this matters:
The case demonstrates a novel use of Google Ad Words to demonstrate confusion, and should be noted by other parties in the online retail sector if they become embroiled in a similar dispute, as it proved important in the judge's decision to grant an injunction and offers a relatively simple and cheap way of collecting evidence of confusion.
Wasabi Frog Ltd v. Miss Boo Ltd and another  EWHC 2767 (Ch)