Tesco Stores Ltd v Elogicom Ltd & Anor [2006] EWHC 403 (Ch) (08 March 2006)

Tesco Stores Ltd v Elogicom Ltd & Anor [2006] EWHC 403 (Ch) (08 March 2006)

Elogicom's registration and use of domain names incorporating 'tesco' constituted use in the course of trade of signs similar to Tesco's registered trade marks in relation to identical or similar services, creating a likelihood of confusion and association, and taking unfair advantage of Tesco's reputation. Elogicom's actions were not with Tesco's consent, were not in accordance with honest practices, and amounted to both trade mark infringement and passing off. The counterclaim for commission failed as the traffic was generated in breach of the affiliate agreement by artificial means.

Citation
[2006] EWHC 403 (Ch)
Parties
Claimant: Tesco Stores Limited; First Defendant: Elogicom Limited; Second Defendant: Robert Ray
Jurisdiction
England and Wales
Judgment Date
08 March 2006
Procedural Posture
Civil / Summary Judgment Application and Counterclaim Dismissal
Outcome
Summary judgment for the claimant; counterclaim dismissed
Legal Topics
Trade Mark Infringement, Passing Off, Internet Domain Names, Summary Judgment, Affiliate Marketing Agreements
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Internet Domain Names Summary Judgment Affiliate Marketing Agreements

Case Brief

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Parties

Tesco Stores Limited

Claimant

Elogicom Limited

First Defendant

Robert Ray

Second Defendant

Procedural Posture

Civil / Summary Judgment Application and Counterclaim Dismissal

Legal Issues

  1. 1 Whether Elogicom's registration and use of 'tesco' domain names infringed Tesco's registered trade marks under the Trade Marks Act 1994
  2. 2 Whether Elogicom's conduct constituted passing off
  3. 3 Whether Elogicom was entitled to commission under the affiliate agreement for traffic generated by the disputed domain names

Ratio Decidendi

Elogicom's registration and use of domain names incorporating 'tesco' constituted use in the course of trade of signs similar to Tesco's registered trade marks in relation to identical or similar services, creating a likelihood of confusion and association, and taking unfair advantage of Tesco's reputation. Elogicom's actions were not with Tesco's consent, were not in accordance with honest practices, and amounted to both trade mark infringement and passing off. The counterclaim for commission failed as the traffic was generated in breach of the affiliate agreement by artificial means.

Court Disposition

Summary judgment for the claimant; counterclaim dismissed

Orders

  • Injunction restraining the defendants from infringing Tesco's registered trade marks and from passing off
  • Order requiring the defendants to transfer the disputed domain names to Tesco