It was over 20 years in the past, on the daybreak of the web age, that the case BT v One in a Million1 established the precept that the mere registration of a website title may represent passing off, and that within the fingers of a cybersquatter, a website title could possibly be an “instrument of fraud”.
It’s maybe stunning, subsequently, that it has taken till now for a courtroom to agree that the identical might be true of a commerce mark utility.
Litecoin Basis Restricted (LFL) launched its “Litecoin” cryptocurrency in 2011. In 2017 Inshallah Restricted, which had no connection to LFL filed a UK commerce mark utility for LITECOIN (in higher and decrease case). When LFL grew to become conscious of the applying it requested Inshallah to give up it, however Inshallah refused. LFL subsequently filed its personal utility for “LITECOIN”, which was then opposed by Nasjet Restricted – an organization beneath the management of the identical sole shareholder and director as Inshallah, a Mr Pepin.
In 2018 Nasjet modified its title to “Litecoin Alternate Restricted”, which prompted LFL to concern proceedings within the Mental Property Enterprise Court docket small claims observe, searching for an injunction to restrain Inshallah, Nasjet and Mr Pepin from passing off any items, companies or enterprise as these of LFL.
An instrument of fraud
At first occasion the courtroom present in LFL’s favour and held that: (i) Inshallah’s commerce mark utility, which appeared publicly on the UKIPO register, did give rise to a misrepresentation to the general public; and (ii) the applying, and Nasjet’s change of title, constituted “devices of fraud”.
Maybe considerably optimistically, the defendants appealed, however the resolution was upheld by Deputy Excessive Court docket Decide John Kimbell QC within the Chancery Division of the Excessive Court docket. The decide agreed that Inshallah’s utility was an actionable misrepresentation, because it was a public announcement of a purported reference to Litecoin, and inherently asserted a proper and intention to make use of the signal when there was no such connection or intention. Decide Kimbell agreed with the primary occasion decide that the commerce mark utility constituted an actionable passing off for a similar causes because the registration of domains did in One In A Million. He additionally agreed that Mr Pepin’s historical past of registering and promoting domains and commerce marks in unhealthy religion was related to his intentions concerning the applying; and that the decide at first occasion had been proper to take it into consideration.
A further device
While not a stunning end result on the information, the case does present a useful further device for model house owners, because it makes clear that, quite than simply file an opposition, there may be the choice to hunt an injunction to forestall passing off even earlier than a defendant has put a mark into use.
