Phones4u Ltd & Anor v Phone4u.Co.UK & Ors

Phones4u Ltd & Anor v Phone4u.Co.UK & Ors

The Court of Appeal held that by August 1999, the claimants had established protectable goodwill in the name 'Phones 4u' and that the defendants' registration and use of 'phone4u.co.uk' amounted to passing off, as it was likely to cause deception and damage to the claimants' goodwill. However, the registered trade mark was limited to use in colour, and the defendants' use did not infringe the trade mark as registered.

Parties
Appellant/claimant: Phones4U Ltd; Appellant/claimant: Caudwell Holdings Ltd; Defendant/respondent: Phone4u.co.uk Internet Ltd; Defendant/respondent: Abdul Heykali; Defendant/respondent: New World Communications (Southern Division) Ltd
Jurisdiction
England and Wales
Judgment Date
19 May 2006
Procedural Posture
Civil Appeal / Appeal From High Court Judgment
Outcome
Appeal allowed in part; passing off established; trade mark infringement claim dismissed.
Legal Topics
Passing Off, Trade Mark Infringement, Domain Names
Intellectual Property Passing Off Trade Mark Infringement Domain Names

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 21 Party arguments 2 Amounts and remedies 2
Sign in to unlock

Parties

Phones4U Ltd

Appellant/claimant

Caudwell Holdings Ltd

Appellant/claimant

Phone4u.co.uk Internet Ltd

Defendant/respondent

Abdul Heykali

Defendant/respondent

New World Communications (Southern Division) Ltd

Defendant/respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment

Legal Issues

  1. 1 Whether the claimants had protectable goodwill in the name 'Phones 4u' as at August 1999
  2. 2 Whether the defendants' registration and use of 'phone4u.co.uk' amounted to passing off
  3. 3 Whether the registered trade mark was infringed given the colour limitation

Ratio Decidendi

The Court of Appeal held that by August 1999, the claimants had established protectable goodwill in the name 'Phones 4u' and that the defendants' registration and use of 'phone4u.co.uk' amounted to passing off, as it was likely to cause deception and damage to the claimants' goodwill. However, the registered trade mark was limited to use in colour, and the defendants' use did not infringe the trade mark as registered.

Court Disposition

Appeal allowed in part; passing off established; trade mark infringement claim dismissed.

Orders

  • Declaration that the defendants' use of 'phone4u.co.uk' amounts to passing off
  • Injunction restraining the defendants from using 'phone4u.co.uk' or any similar name