"The point is that the names are only saleable to Marks & Spencer and blocking their use by Marks & Spencer is only a useful negotiating tactic on the footing that they are names which it is dangerous for Marks & Spencer to allow to remain out of their control. The danger arises from the risk of deception which their existence necessarily presents. The allegation that this was the defendants' object in this case is fairly made, supported by overwhelming evidence, and is left wholly unanswered by the defendants' affidavits. Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing-off, and the injunction will be in terms which will make the name commercially useless to the dealer."
"The history of the defendants' activities shows a deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive. The threat of passing-off and trade mark infringement, and the likelihood of confusion arising from the infringement of the mark are made out beyond argument in this case, even in which (sic) it is possible to imagine other cases in which the issue would be more nicely balanced.The result is that the plaintiffs in all five actions are entitled to final injunctions "quia timet"."
"The cases to which I have referred (and there are others to the like effect) show that it was firmly established at the time when the Act of l875 was passed that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and of the extent of his trade and that such right of property would be protected by an injunction restraining any other person from using the mark."
"2. No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this Act shall be deemed to affect rights of action against any person for passing-off goods as the goods of another person or the remedies in respect thereof."
"My Lords, that cause of action is, as I have said, a very old and a very familiar one. 250 years ago, in the case of Southern v How , reported in Popham's Reports at page 144, Doderidge J, quoting a case earlier in point of date, namely in the 22nd of Elizabeth, says,
"This principle is stated by Lord Justice Turner in Burgess v Burgess (LR 14 CD p. 748) and by Lord Halsbury in Reddaway v Banham (LR (1906) AC at page 204), in the proposition that nobody has any right to represent his goods as the goods of somebody else. It is also sometimes stated in the proposition that nobody has the right to pass off his goods as the goods of somebody else. I prefer the former statement, for whatever doubts may be suggested in the earlier authorities, it has long been settled that actual passing-off of a defendant's goods for the plaintiff's need not be proved as a condition precedent to relief in Equity either by way of an inunction or of an inquiry as to profits or damages ( Edelsten v Edelsten 1 De G., J & S 185 and Iron-Ox Remedy Company Ld v Co-operative Wholesale Society Ld 24 RPC 425). Nor need the representation be fraudulently made. It is enough that it has in fact been made, whether fraudulently or otherwise, and that damages may probably ensue, though the complete innocence of the party making it may be a reason for limiting the account of profits to the period subsequent to the date at which he becomes aware of the true facts. The representation is in fact treated as the invasion of a right giving rise at any rate to nominal damages, the inquiry being granted at the plaintiff's risk if he might probably have suffered more than nominal damages."
"My Lords, the basis of a passing-off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may, of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case is, where the representation is implied in the use or imitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant's use of such mark, name, or get-up is calculated to deceive. It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on.
" The action is one of that class which is known as an action on the case, akin to an action of deceit. In an action on the case, the cause of action is the wrongful act or default of the defendant. The right to bring the action depends on the happening of damage to the plaintiff. A man, for instance, may be negligent: and the consequences of his negligence may not cause damage for twelve months. The cause of action is the breach of duty: the right to bring the action depends upon the happening of the damage. But this class of case forms an exception, or an apparent exception, to the ordinary action of deceit; because, in an ordinary action of deceit, the plaintiff's cause of action is false representation, but he cannot bring the action until the damage has accrued to him by reason of that false representation.
"My Lords, Spalding v Gamage and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."
"But if it be stated that the Defendant is manufacturing that which is known to be the trade mark which the Plaintiff alone has the right to use, and the use of which on the goods of a third party would be a fraud upon the Plaintiff; and that the Defendant is selling such labels to anyone who asks for them, and is thus scattering over the world the means of enabling parties to commit frauds upon the Plaintiff, and that such frauds have been committed; that is, I think, a sufficient averment to entitle the Plaintiff to an injunction. The ground of the jurisdiction being fraud, if the Defendant be committing fraud, either by selling goods under the Plaintiff's trade mark, or enabling others to do so by distributing the means of doing so, it cannot be said that this Court has no power to interfere by injunction to arrest the evil at its source, without compelling the Plaintiff to wait until the whole fraud is brought to a completion by the sale of the goods."
"It was contended, that the acts of the defendant enabled his wholesale customers to shew these documents to their own retail customers, for the purpose of passing off the goods bought from the defendant as the plaintiffs' manufacture. The answer is, that, unless the documents were fabricated with a view to such a fraudulent use of them, or unless they were in themselves of such a nature as to suggest, or readily and easily lend themselves to, such a fraud, (which in my opinion they were not), the supposed consequence is too remote, speculative, and improbable to be imputed to the defendant, or to be a ground for the interference of a court of justice with the course of the defendant's business. There is no evidence that, in point of fact, any such use was ever made of them. The "directions for use" spoke unmistakably of "Frister and Rossmann's shuttle sewing machine;" and no one, however careless, could read, in that document, the words "on Singer's improved system" without seeing and understanding their context."
"In the second class of cases which I am considering, the trade is not deceived. I am speaking from my large experience in these matters. The retail buyers know from whom they are buying, and, if there is anything like a fraudulent device, such as I am referring to, they are not taken in, they are not deceived. But what is done by the manufacturer is this - he puts an instrument of fraud into their hands. It has been said more than once in this case, in substance, that the manufacturer ought not to be held liable for the fraud of the ultimate seller, that is, the shop-keeper, or the shop-keeper's assistant. But that is not the right view of the case. Have the Defendants in this case, or not, knowingly put into the hands of the shopman, who is more or less scrupulous or unscrupulous, the means of deceiving the ultimate purchaser? That is the question which I have to try, and that is a question of fact, and nothing else."
"I would be slow to decide that if a trader in England sells goods and labels which are true and has no knowledge of any improper use of those goods in a foreign country, such trader has committed a tort in England. But when I have already held as a fact that Mr Jindrich Ost, the proprietor of the first defendant, not only knew that the second defendant was going to add cane spirit and sell it as Scotch Whisky but intended that the whisky which was supplied should be admixed, bottled and have the labels put on the bottle describing it as Scotch Whisky, then in my judgment the first defendant's acts in selling those instruments amount to tortious acts done in England."
"He submitted that there can never be a tort where the English exporter exports nothing but the malt whisky, that being something which is susceptible of being used innocently in the foreign country. It seems to me that Mr Cochrane's submission cannot be correct. Suppose, for example, a case where the English exporter has told the foreign importer exactly how to set up deceptive sales of the admixture. It cannot be the law that the English exporter will escape liability simply because he does nothing except export the Scotch Whisky. If he exports it with the intention that the admixture shall be sold in a deceptive manner, it is immaterial that he has been responsible neither for the printing and production of the deceptive labels and cartons, nor for their actual implication in the sale of the liquor in the foreign country. In that state of affairs the whisky, being intended to facilitate the deceptive sales, is itself, if you like, an inchoate instrument of deception."
"The question of the plaintiffs' right to an injunction is covered by Collins Co v Brown ; but, apart from that authority, I should have thought it was plain that in a case such as I have stated this court would certainly interfere to protect a foreign trader who has a market in England, in the way I have specified, from having the benefit of his name annexed by a trader in England who assumes that name without any sort of justification."
"The court will not countenance any such pre-emptive strike of registering companies with names where others have the goodwill in those names and the registering party then demanding a price for changing the names. It is an abuse of the system of registration of company names. The right to choose the name with which a company is registered is not given for that purpose."
"If a man has in his possession or control goods the dissemination of which, whether in the way of trade or, possibly, merely by way of gifts (see Upmann v Forester (1883) 24 ChD 231) will infringe another's patent or trade mark, he becomes, as soon as he is aware of this fact, subject to a duty, an equitable duty, not to allow those goods to pass out of his possession or control at any rate in circumstances in which the proprietor of the patent or mark might be injured by infringement ensuing. The man having the goods in his possession or control must not aid the infringement by letting the goods get into the hands of those who may use them or deal with them in a way which will invade the proprietor's rights. Even though by doing so he might not himself infringe the patent or trade mark, he would be in dereliction of his duty to the proprietor. This duty is one which will, if necessary, be enforced in equity by way of injunction: see Upmann v Elkan (1871) LR 12 Eq 140 (1871) 7 Ch App 130. The man having possession or control may also be under a duty to give information in relation to the goods to the proprietor of the patent or mark: Upmann v Elkan ."
"1. To immediately cease all use of the domain names britishtelecom.co.uk and britishtelecom.net and forthwith to take all necessary steps to have the registrations of these domain names transferred to the ownership and control of BT by the relevant registration authority in each case.
"The domain name bt.org was registered on behalf of a client of One In A Million Limited, who requires the domain for his personal use, with his initials being BT.
"Your company name, its identity and the way in which it presents itself to the outside world is very important. Many companies have not taken the prospect of the Internet seriously and have failed to recognise the need to register, protect and maintain their unique name and corporate identity.
"Further to our telephone conversation earlier this evening, I confirm that I own the domain name burgerking.co.uk.
"Further to our telephone conversation on Friday, l3 September l996, I confirm that I have the domain name tandy.co.uk available for sale or hire. Additionally, I have also the other following domain names that may interest you:
"We are not trading under the name Sainsbury nor do we intend to trade under the name Sainsbury. We have merely purchased the Internet domain names j-sainsbury.com, sainsbury.com and sainsburys.com as part of our personal collection."
"For a dealer in Internet domain names there are in principle only four uses to which the names can be put. The first and most obvious is that it may be sold to the enterprise whose name or trade mark has been used, which may be prepared to pay a high price to avoid the inconvenience of there being a domain name comprising its own name or trade mark which is not under its control. Secondly, it may be sold to a third party unconnected with the name, so that he may try to sell it to the company whose name is being used, or else use it for purposes of deception. Thirdly, it may be sold to someone with a distinct interest of his own in the name, for example a solicitor by the name of John Sainsbury or the Government of the British Virgin Islands, with a view to its use by him. Fourthly, it may be retained by the dealer unused and unsold, in which case it serves only to block the use of that name as a registered domain name by others, including those whose name or trade mark it comprises."
"The history of the defendants' activities shows a deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive. The threat of passing-off and trade mark infringement, and the likelihood of confusion arising from the infringement of the mark are made out beyond argument in this case, even if it is possible to imagine other cases in which the issue would be more nicely balanced."
"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."
"(3) A person infringes a registered trade mark if he uses, in the course of trade a sign which - (a) is identical with or similar to the trade mark, and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,