UK Appeals Court Rejects Phones4u Trademark Infringement Claim

by Robin Pilgrim, LawAndTax-News.com, London

30 May 2006

The UK's Court of Appeal has ruled that on-line mobile phone seller phone4u.co.uk did not infringe the trademark of John Caudwell's Phones4u, which had previously registered the domain phones4u.co.uk.

The Court of Appeal confirmed last year's High Court judgement as regards trademark infringement, but reversed the High Court's ruling on passing-off; Lord Justice Jacob said that the High Court judge had applied the wrong test in deciding whether Caudwell had goodwill that could be protected by passing off.

The Trademark Registry has originally told Caudwell's firm that Phones4u as a name was not sufficiently distinctive, and the registration had been granted on the basis that the wording was associated with a particular colour scheme; both the High Court and the Court of Appeal said that since phone4u had not used the same presentation, there could not be trademark infringement.

The Court of Appeal said that Caudwell had clearly established goodwill in the name phones4u by 1999, when the phone4u.co.uk domain name was registered by Abdul Heykali, and that the latter registration created "an instrument of fraud". There could be no realistic use of the name, said Lord Jacob, "without causing deception", and indeed there was evidence of confusion in the minds of customers of the phone4u web-site. Lord Jacob also noted that Mr Heykali had attempted to sell the domain name once he knew of Caudwell's shops. He therefore allowed the passing-off claim.

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