Global Projects Management Ltd v. Citigroup Inc. & Others; Citigroup Inc. & Others v. Davies and Global Projects Management Ltd (Park J.;  EWHC 2663 (Ch); 17.10.05)
Park J. gave summary judgment for Citigroup. He held that the registration and ownership by Global Projects Management (GPM) of the domain name citigroup.co.uk constituted passing off and trade mark infringement under Section 10(3). He further held that Mr Davies was liable to Citigroup as he had participated personally with GPM in a common design to carry out the tortious acts.
The facts of the case were as follows: On 6 April 1998 Citicorp and Travellers Group announced a merger.The announcement stated that the combined company would be named Citigroup Inc. At some time in the afternoon of that same day, Mr Davies, on behalf of GPM applied to Nominet to register the domain name citigroup.co.uk. He applied on the following day to register the domain name citigroup.com but this second application failed. GPM did not attempt to sell the domain name to Citigroup or any third party. Citigroup brought evidence that many emails intended for employees in the UK had failed to get through because they had been addressed to the .co.uk address. Some of those emails must have contained sensitive and confidential information, although there was no evidence (subject to one exception) that Mr Davies had attempted to use the information. Citigroup commenced proceedings at Nominet but when they were close to adjudication, GPM commenced a threats action. Citigroup counterclaimed for passing off and trade mark infringement.
Park J. followed British Telecommunications PLC v. One in a Million Limited  1 WLR 903. In that case, Aldous LJ did not accept as a defence that One in a Million had not used the domain names to make fraudulent misrepresentations as it was not trying to supply any goods or services to anybody. In the circumstances, Park J held that it was not open to him to accept the equivalent defence in this case. Park J held that Citigroup had sufficient goodwill through the publicity of the merger to bring a passing off action. There was irrefutable evidence that GMP and Mr Davies had as their object the obtaining of a domain name which carried a potential threat of deception harmful to Citigroup Inc. The case was therefore essentially on all fours with One in a Million and the application for summary judgment succeeded.
Geographical indications of origin
Northern Foods Plc v. The Department for Environment, Food and Rural Affairs; The Melton MowbrayPork Pie Association (Interested Party) (Crane J.;  EWHC 2971 (Admin); 21.12.05)
Crane J held that DEFRA was justified in forwarding the application for the registration of “Melton Mowbray Pork Pie” as a protected geographical indication to the Commission.
The definition of a geographical indication of origin states that it is:
The name of a region, specific place or, in exceptional cases, a country used to describe an agricultural product or food stuff;
- originating in that region, specific place or country, and
- which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which takes place in the defined geographical area.
The “geographical area” in DEFRA’s application covered a large area, including not only Leicestershire, but Nottinghamshire and parts of Northamptonshire and Lincolnshire. This was obviously wider than the “specific place” (or “region”) where the pork pies originated i.e. Melton Mowbray in Leicestershire. The judge held that this was the correct interpretation: the “defined geographical area” could be different from the “specific place” where the food stuff originated.
Dyson Technology Ltd v. Ben Strutt (Sir Donald Rattee;  EWHC 2814 (Ch); 25.11.05)
The defendant, an engineer, left Dyson’s employ and took employment as a design engineer with Black & Decker. His employment contract with Dyson included the following obligation:
You will not, for the period of twelve months immediately after the termination of your employment… so as to compete with [the Claimant], carry on or be engaged, concerned or interested in any business which is similar to and competes with any business being carried on by [the Claimant] at the termination of the employment with which you were involved at any time during the period of twelve months immediately preceding the termination of the employment.
In a speedy trial of the action, the judge held that this clause was valid and enforceable. It was no wider than was reasonably necessary to protect Dyson’s legitimate commercial interests in the confidential information relating to its business. Finding it valid was in the interests of both parties and not contrary to the public interest.
The judge granted an injunction despite the fact that Dyson did not contend that it had suffered any damage. An injunction was the normal remedy in such cases unless there were exceptional reasons in which the degree of hardship caused by the injunction was so extreme as to make it unconscionable. This was not such an exceptional case.
Reporter’s note: I am grateful to my colleagues at Bird & Bird, Cristina Garrigues, Emilia Linde and Alice Sculthorpe, for assisting me in the preparation of this report.