International law firm Bird & Bird, has successfully defended phone4u.co.uk, a small internet phone retailer, in legal action brought by multinational Caudwell group, which owns the Phones 4U chain of High Street stores.
Caudwell sued phone4u.co.uk’s owner Abby Heykali for trade mark infringement and passing off, claiming that the use of various domain names including phone4u.co.uk and phone4u.com confused the public. However, in an important judgment handed down today, the Deputy Judge, Richard Sheldon QC, held that the claimants had not acquired the requisite goodwill or reputation in the expression “Phones 4U” at the time the Defendants registered the domain name phone4u.co.uk and therefore the use of the domain name did not amount to passing off. The Judge also dismissed the Claimants’ allegation of trade mark infringement.
Mr Heykali said:
“I am relieved that this is all over. I registered phone4u.co.uk in August 1999 long before I ever heard of Phones 4U. I have always traded honestly and attract customers because of my low prices, not because they think I am anything to do with Phones 4U”.
Jane Mutimear, partner at Bird & Bird, who acted for Mr Heykali added:
“Had there been evidence of people being deceived we would have advised our clients to change the name of the website. Caudwell was unable to show that internet purchasers were confused at the point of purchasing from our clients. This case demonstrates the difficulty a company can face if they choose a name which lacks distinctive character – they cannot prevent other traders from using similar names.”
For more information, please contact Jane Mutimear on +44 20 7415 6000 or Larry Cattle on +44 20 7415 6156.