In early 1997 French Connection UK (“FC”) launched an advertising campaign using FCUK to represent it’s brand name. This aroused media attention and upheld complaints to the ASA, and a second campaign was launched, with similar results.
Who: French Connection Ltd. and Antony Sutton
When: December 1999
Where: Chancery Division of the High Court of Justice, London
In early 1997 French Connection UK ("FC") launched an advertising campaign using FCUK to represent it's brand name. This aroused media attention and upheld complaints to the ASA, and a second campaign was launched, with similar results. FC then applied successfully to register FCUK as a trade mark. In April 1997 the defendant ("AS"), an internet and email consultant, registered the domain name FCUK.com AS said this was because it was used by some internet users as a means of avoiding filters imposed by ISP's to prevent use of the expletive. These users would then alight on AS's site accidentally, thus getting him business prospects. In October 1997 AS wrote to FC offering to sell the domain name. FC responded by referring to the One in a Million judgement and threatening proceedings. AS replied in December 1997 offering to revoke the FCUK registration or co-operate in transferring it to FC, requesting reimbursement of the related costs. FC replied asking AS to contact them to organise the transfer. After a delay AS then withdrew his original offer. In April 1998 AS set up a website under the FCUK domain name and later adopted the name First Consultants UK. In September 1998 FC issued proceedings for passing off, breach of the settlement contract it alleged was concluded in the December 1997 correspondence and trade mark infringement.
FC sought summary judgement in respect of the passing off and breach of contract claims.
Rattee J. held that on the contract claim there was a real arguable case that the correspondence did not give rise to a contract. All the evidence had to be considered at full trial. On passing off, the Court held the evidence before it did not support FC's contention that FCUK was synonymous with FC, nor had FC refuted the AS claim that FCUK was commonly used by web surfers in the way described. In April 1998 the ASA had already rejected the FC argument that most people would regard FCUK as the initial letters of FC, while there was no convincing evidence that a significant number of people were likely to be misled into thinking AS's site was connected with FC. Nobody arriving at the FCUK.com site would think for more than a fraction of a second that this was the case.
All in all, the defendant's evidence could not be disregarded without being tested at trial, so on both counts the summary judgement application was thrown out.
Why this matters:
Although most contemporary reports of the judgement suggested otherwise, the argument that the distasteful nature of the mark should on public policy grounds render it unprotectable was not material to the outcome. Rattee J commented, however, that at trial AS may well wish to argue that this aspect was a ground for revocation of the FC trade mark registration.