Wasabi Frog Ltd v Miss Boo Ltd & Anor

Neutral Citation Number: [2009] EWHC 2767 (Ch) IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION Before: MR JUSTICE WARREN - - - - - - - - - - - - - - - - - - - - - Between: WASABI FROG LIMITED - and - (1) MISS BOO LIMITED (2)GULFRAZ MOHAMMED - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Case No: HC09C 04056 Royal Courts of Justice Strand, London, WC2A 2LL Date: 04/11/2009 Claimant Defendants Ms Heather Lawrence (instructed by Pannone LLP) for the Claimant Mr Gulfraz Mohammed (the second Defendant and Director of Miss Boo Ltd) appeared in Person Hearing dates: 3rd November 2009 - - - - - - - - - - - - - - - - - - - - - Approved Judgment I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic. ............................. MR JUSTICE WARREN MR JUSTICE WARREN Approved Judgment Mr Justice Warren : Introduction Wasabi Frog Ltd v Miss Boo & Anr 1. 2. This is an application by Wasabi Frog Ltd (“the Applicant”) which is the claimant in this action to restrain Miss Boo Ltd and Gulfraz Mohammed (“together “the Respondents) from trading under or by reference to the marks or domain names “Miss Boo”, “miss.boo.co.uk” or the Applicant’s marks or domain names “boohoo”, “boohoo.com” and “boo”, or any marks or domain names colourably similar thereto and to require the Defendants to disable their website at www.missboo.co.uk; Helen Lawrence appears for the Applicant. Mr Mohammed appears in person and also speaks for Miss Boo Ltd of which he is a director and the controlling mind. The Applicant 3. 4. 5. 6. I start with saying something about the Applicant. The evidence at present before the Court is from Christopher Bale, as directors of the Applicant. So far as it describes the Applicant’s business I do not think it is challenged and there is certainly no evidence to say that it is wrong. The Defendants disagree with the conclusions which Mr Bale expresses about a likelihood of confusion. I take much of the following from Ms Lawrence’s skeleton argument The Applicant is an online retailer of fashionable women’s clothing, shoes and accessories, and has traded under and by reference to the names BOOHOO and BOOHOO. COM since November 2006. Mr Bale says, and for the purposes of this application I accept, that the name was chosen because it was distinctive, memorable and unusual; had no real meaning in the fashion world and no connection to women’s clothing (or any other type of goods or services), and is strikingly different from any other competing brands in the marketplace. I note that there was an earlier fashion clothing company trading under the name boo.com but this failed in the dot.com crash in the early years of the millennium. The Applicant online shop is accessed through the website at the domain name www.boohoo.com, and provides good quality stylish clothing and accessories at a value price point. It targets its products at young women aged between 17 and 25 years old, who are typically single with no dependents and high levels of disposable income. The product range available at www.boohoo.com is expanding in line with growth in sales, but includes dresses, tops, knitwear, jeans, tailoring, summer wear, shoes and boots, jackets, coats and accessories. The Applicant’s brand has gained a reputation for being a young, vibrant and glamorous brand which is affordable to young women. Most of the sales are within the United Kingdom (particularly the North of England and the Midlands), with a small percentage of sales in Ireland and the rest of Europe. A key feature of “boohoo.com” is that 80% of the clothing and 30% of the footwear sold in the Applicant’s online shop is branded with the “boohoo.com” brand, and this name appears on the labels and swing tags of the goods sold on the website as well as on the website itself. The Applicant prides itself (and has invested heavily) in the level of its customer service and provides a next day delivery service fully backed up by a thorough returns service and comprehensive customer service function. MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr 7. The Applicant is the registered proprietor of the following Community Trade Mark registrations which are currently in force: a) b) c) Community Trade Mark Number 006692065 for the word “BOO” in Class 25 registered with effect from 22 February 2008 (“065”). Community Trade Mark Number 005085238 for the word “BOOHOO” in Classes 9, 14, 16, 18, 25 and 35 registered with effect from 19 May 2006 (“238”). Community Trade Mark Number 006688113 for the word “BOOHOO. COM” in Classes 3, 9, 14, 16, 18, 25 and 35 registered with effect from 21 February 2008 (“113”). In addition to the domain name www.boohoo.com, the following domain names are owned by the Applicant, which were registered to preserve the Applicant’s position in the event that it wished to branch out or expand into providing on-line retail services in respect of teenagers’ fashion. All of these domain names are currently used to re- direct customers to the www.boohoo.com website: www.boohoo.co.uk – 1 September 1999; www.missboohoo.com – 12 August 2008; www.missboohoo.co.uk – 12 August 2008; www.missboohoo.eu – 12 August 2008; The Applicant’s business and sales have been successful ever since its website first went live in 2006. The turnover for 2007/08 was £3.3 million; the turnover for 2008/09 was £8 million; the estimated turnover for the first six months of 2009/10 is £7.9 million and the forecasted turnover for 2009/10 is £17 million. As of the end of September 2009 the Applicant has approximately 403,975 “active” customers (that is customers who have purchased goods from the company within the last 12 months), operates a website which currently attracts 20,333,480 page views per month, which demonstrates the high level of interest in the website and secures sales via the website which total between approximately £30,000 to £60,000 every day The Applicant has made considerable investment in marketing and advertising its business in many different ways, it has invested funds in the region of £1.5 million annually to achieve its reputation and market share. It has also won a number of awards. The Applicant has spent more than 2 years developing its brand and its website. The brand differentiation is specifically expressed through the design of the website and the “looks” that appear on the website, which is designed to offer stylistic input, information and advice to customers, assisting with decisions on what to wear and suggesting stylish clothing combinations. The Applicant spends in the region of £200,000 per annum on Google searches and search engine optimization. It has engaged external marketing and design agencies to assist with the “look and feel” functionality of the website and design agencies to ensure consistency of online and offline branding (including electronic newsletters). The Applicant also constantly 8. 9. 10. 11. MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr monitors the quality of its website, products and customer services and carries out “mystery shopper” buys online to check the quality of the goods and packaging as received by the customer. 12. In respect of market share, independent surveys show that the Applicant is successful. For instance the Hitwise “Most Popular Clothing Website” shows it competing against household names in all clothing sectors such as Next, TopShop.com, Mothercare, Monsoon, Boden and Laura Ashley amongst many others. 13. Mr Bale says that the strength of the “boohoo.com” brand is shown by the fact that ASOS (the UK’s largest online-only fashion and beauty store, which was launched in 2000 and is second in the Hitwise list after Next (ASOS stands for “As Seen on Screen )) is now bidding on the BOOHOO keyword on Microsoft’s search engine. This means that ASOS are paying Microsoft in order to be associated with the “boohoo.com” brand, which is an indication of the reputation the brand enjoys. There is considerable force in what Mr Bale says. 14. 15. In August 2009, the Applicant took the decision to introduce an additional line of “Boo” clothing which is aimed at slightly older fashion conscious women in the 25 – 30 age range. The “Boo” label has been on sale since approximately late September/early October 2009 through the “boohoo.com” website. However, whether this name yet has an established reputation must be open to some doubt. Mr Mohammed does not accept that the Applicant has launched this range, being unable to find any reference to it on Applicant’s website. The first Defendant has recently launched an online retail business selling women’s clothing, shoes and accessories. Its products are in direct competition with the Applicant. It trades under and by reference to the names MISS BOO and MISSBOO. CO. UK and has does so since around 1 September 2009. The Applicant discovered the Defendants’ website almost immediately it was launched. The Defendants 16. 17. The first Defendant’s business is conducted online through a similar website; it trades in the same marketplace and the same demographic and target customer base as the Applicant; it advertises in the same magazines selling similar (but according to Mr Bale cheaper, lower quality, off-the shelf – something which may be disputed) women’s fashion clothing; and it trades in the same geographical area in the North of England. The first Defendant’s online shop is accessed through the website at the domain name www.missboo.co.uk. Mr Mohammed tells me that he developed the site with the assistance of a web-designer. I do not know at this early state of the proceedings the nature of the discussions or instructions which he had with the designer or the extent to which they were influenced by the design of the Applicant’s site – although it has to be said that the number of similarities would be surprising if there no influence. 18. Mr Mohammed told me in his address how the name “Miss Boo” had been selected; “Miss” because the range is directed at young females and “Boo” because that is a word which, politely, means loved one in popular culture particular music. He had carried out searches before adopting the name. There was no company by that name; MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr there was no website of that name; and he says that when he applied to register the trade mark MissBoo (as one word) the IPO informed the owners of various marks (including Boo Coo) of the application but it did not inform the Applicant. I do not know the explanation for this omission, but it may have something to do with the fact that the Applicant’s marks are registered as Community Trade Marks. 19. 20. The Defendants knew of the Applicant’s business and trade name boohoo.com when the first Defendant’s site was launched. It must be said, therefore, that they went into business with their eyes open. Indeed, even before they had started to build up business, but after the web-site had opened (and thus after expenditure had been incurred) the response the letter before action from the Applicant’s solicitors was to reject the complaints Mr Mohammed expressing himself to be relaxed about it. There is no doubt that Mr Mohammed is very closely connected with the first Defendant. If and to the extent to which it is appropriate to grant relief against the first Defendant, Mr Mohammed should be bound too. The Law 21. An application for an interim injunction requires the Applicant to show there is a triable issue; that an award of damages will not represent adequate compensation and that the balance of convenience favours the grant of an injunction. 22. Ms Lawrence puts her case on the basis of both trade mark infringement and passing off. A claim in passing off has at its heart a deception. The defendant’s conduct must be calculated to pass off his goods as those of the claimant or to produce such confusion in the minds of probable purchasers as would be likely to lead to the other goods being bought and sold for his. It is necessary that a substantial number of the relevant calls will be misled into purchasing the defendant’s product in the belief that it is claimant’s product. Mere confusion is not enough. Having said that, I agree with Ms Lawrence when she says that the Defendants knew of the Applicant’s trade and marked when they launched the Miss Boo website; whether their conduct can be said to be calculated to pass of their goods as those of the Applicant must be judged objectively. It does not require fraud on the part of the Defendants but only that the reasonably foreseeable consequence of their actions would be to pass off their goods as those of the Applicant. Otherwise, the ingredients of the cause of action can be identified this way: a) b) c) a trading reputation and goodwill in the marks; a misrepresentation made by another trader to prospective customers of his or ultimate consumers of goods or services supplied by him; actual damage or a likelihood of damage to the business or goodwill of the trader by whom the action is brought. 23. In the present case, a claim for infringement of a Community Trade Mark requires the Applicant to establish that the Defendants are using in the course of trade without the Applicant’s consent a sign which is identical with or similar to the CTM in relation to goods or services which are similar to those for which the CTM is registered where, because of its identity with or similarity to the CTM and the identity or similarity of MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr the goods or services covered by the CTM and the sign, such that there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the CTM (Article 9(1)(b) of Council Regulation of 20 December 1993 on the Community Trade Mark 40/94/EEC)). In essence, what the Applicant will need to show is a likelihood of confusion between one or both or Miss Boo and missboo.co.uk on the one hand and any one of the Applicant’s CTMs on the other hand (BOO, BOOHOO, BOOHOO. COM). In this context, although boohoo.com is the significant trading name of the Applicant, it must be remembered that it is registered with BOO for the relevant class of goods. It is no defence for the Defendants to say that Boo was not used by the Applicant when the first Defendant launched its site. Confusion 24. 25. It is clear from the evidence that the Applicant has a substantial reputation and goodwill in the marks “BOOHOO”, “BOOHOO. COM”. I do not consider that the same can be said of “BOO” although the mark is of course registered as a CTM. To some extent, particularly on an interim application of this sort, I have to form my own impression of whether there is a likelihood of confusion. It is of course difficult for me to put myself into the position of a 17 to 25 year old female living in the North of England. But I do perfectly well understand what Mr Mohammed means when he says that these girls are “very very savvy”. He says that they are simply not the sort of people who will be confused by these competing names. They do their research and know what they are buying. He says that his site would never be focused with something so well known as Boohoo.com 26. Ms Lawrence relies on two matters which, she says, demonstrate actual confusion so far; and she relies on other matters to justify a strong inference that there is likely to be confusion. I remind myself that she does not have to demonstrate that her case is bound to succeed; at this stage, all that she needs to show is a triable issue. 27. The two actual matters are these: i) The first matter is this. A Mr Derrick Burns from Kommando Limited contacted Ms Luisa Withington of the Applicant at her “boohoo.com” email address on 9 September 2009 to enquire whether the Applicant would consider using its Kommando Live Music Arenas as a platform to promote the boohoo brand, referring to the Applicant twice as “Miss Boo”. This, Mr Lawrence submits, show that he is confused between Miss Boo and the person with whom he was dealing ie the Applicant. Mr Mohammed responds to this by suggesting – and he may well be right – that Mr Burns probably went through all the advertisements in a magazine phoning all the advertisers in the hope of obtaining business. Although not in his evidence, I believe that he told me that he himself had a call from Mr Burns himself which shows that Mr Burns was not confused but was simply contacting everyone he could. That cannot, I think be right. If Mr Burns was phoning every advertiser, it would be important for him to keep his contacts in apple-pie order and to know in each case who he was dealing with. The fact that he has referred when contacting boohoo.com to Miss Boo does, to my mind, demonstrate precisely the confusion which Ms Lawrence identifies. In case I have misunderstood what MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr ii) iii) iv) v) he told me, I would still consider that the communication from Mr Burns displays that same conclusion. That he could be confused, as a person working with the fashion industry, suggests that even very very savvy young females might also be confused. The second matter is this. In order to limit the potential for damage to the business, once the Applicant learnt of the Defendants’ activities, the Applicant purchased the words “MISS BOO” as Google Ad Words. This means that when an internet user enters the words “MISS BOO” into a search engine, the Applicant’s advertisement for www.boohoo.com appears in the sponsored search results. Google Analytics reports confirm that the “click through” rate of visitors to the www.boohoo.com website, via the link which appears in the sponsored search results after they have searched against the words “MISS BOO”, is 14.89%, the 4th largest source of traffic to the “boohoo.com” website at present. Ms Lawrence submits that this leads to these conclusions: (a) customers are searching for the “boohoo.com” website by searching against the term “MISS BOO”; (b) a significant number of customers searching for the Applicant’s website have entered the term “MISS BOO” believing that this will take them to the “boohoo” website; (3) those customers are confused because of the similarity of the names; are likely to be confused if confronted with an alternative “MISS BOO. CO. UK” website; or are believe the websites are connected or otherwise associated. I am not sure that that analysis is quite right, although I do think that she is correct in suggesting that there is a well arguable case that this demonstrates confusion. The argument she presents assumes that customers are searching for boohoo.com. But that might not be right. Mr Mohammed suggests, in contrast, that a person might see the Miss Boo advertisement in a magazine and, instead of inserting the website shown in the advertisement (www.missboo.co.uk) simply searches for Miss Boo. That then throws up the Applicant’s Google Ad Words with the result that the potential customer goes to the boohoo.com site. Far from diverting traffic from the Applicant, the result is that people responding to the first Defendant’s advertisement are diverted to the boohoo.com website. I do not think that Mr Mohammed’s argument begins to stack up. It is to my mind highly unlikely that in the short space of time during which Miss Boo has been advertising, it would have generated sufficient interest to account for so much traffic to the boohoo.com website – the 4 th largest source of hits although in absolute terms I do not know what it accounts for. Precisely why so many people appear to insert Miss Boo either in the address line of the web- browser of in their Google search will be a matter for evidence. It seems to me to be at least as likely that they have in their minds something they have heard from a friend or colleague or read in magazines; this is much more likely to be something about boohoo.com than it is about Miss Boo giving the scale and duration of the trading of each party. A person with a recollection of that sort might well insert all sorts of different search terms, including Miss Boo. I am of course speculating. But so too Mr Mohammed is speculating when he suggests that the magazine advertisements are the real source. MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr vi) I should add this. A Google search for “Miss Boo” did not (and I think this is still the case) produce an entry for missboo.co.uk. To get such an entry, the search term needs to be “missboo”. Given that the Google Ad Words for such a search produces, on the first search result page, the link to the boohoo.com website, it may perhaps not be surprising that even a person searching for Miss Boo would in fact find herself arriving at the boohoo.com website. But there is nothing to suggest that any significant number of searchers are diverted in this way. It is, I think, the case that the Applicant has a well arguable case – which will of course depend on the evidence as it eventually emerges – that this second matter demonstrates a likelihood of confusion. One of the other more general matters on which Ms Lawrence relies is the capacity for association by reason of the use of “Miss” in conjunction with “Boo”. There are two points here. The first is that in the phrase “Miss Boo” and the word “boohoo”, the emphasis is on the “boo”. The words are, as Ms Lawrence points out, particularly important in the context of on-line shopping. This is because it is the words which lead the consumer to the shop – this is not like walking down a parade of shops in the physical world. If, as she suggest, that is the emphasis, then it is well-arguable, as she also submits, that a consumer might be led to believe that Miss Boo is connected with the Applicant but aimed at a slightly different market. In this context, it is right to say that the names “BOOHOO”, “BOOHOO. COM” and “BOO” are distinctive and striking, unusual and quite different in the online retail and high street retail market for clothing, footwear and accessories, thereby giving rise to a higher distinctiveness and a higher likelihood of confusion and/or association in the minds of the relevant trade and/or public. The second point is that the conjunction of “Miss” with “Boo” is the conjunction of a conventional word (“Miss”) with a CTM (“Boo”). Again, the consumer is likely to associate Miss Boo with whatever it is that Boo relates to. Since the Applicant has a CTM for Boo, it is entitled to use that mark for its goods and may in fact have done so. Well-known examples of similar use are “Miss Selfridge” and “Miss Bonwit”. In similar circumstances, a likelihood of association has been found to exist in OHIM Decisions: see for example Web/Miss and Ghost/Miss Ghost There is obviously a strong case for such an association in the present case (ie Boo/Miss Boo) and a corresponding likelihood of confusion for the purposes of trade-mark infringement. The case is not so powerful in relation to passing-off, since the Applicant may not have established a reputation and goodwill in that mark. Even so, there is, in my judgment, a well-arguable case that the same association and confusion can be established between boohoo and Miss Boo. Ms Lawrence also suggests that the style and layout of the websites are confusingly and colourably similar. She does identify a number of similarities. Mr Mohammed perfectly correctly points out that there are a limited number of combinations of styles and layouts available; he has shown me the home pages of a number of on-line fashion clothing stores so show that they all share similarities, in particular in the colours which they use. Nonetheless, it would be surprising to my mind if the first Defendant’s site had not been designed with an eye to the Applicant’s site. There are a-typical features which the two sites do share. I do not attach any weight to this however. As Ms Lawrence herself submits, it is the words which are important. Once the words have got the consumer to the “wrong” site, she is unlikely to be 28. 29. 30. MR JUSTICE WARREN Approved Judgment Wasabi Frog Ltd v Miss Boo & Anr affected very much by the similarities between the sites save to this limited extent: a returning customer of boohoo.com finding herself on the Miss Boo site might, but not necessarily would, mistakenly think that this was the site she had originally visited. 31. In my judgment, there is a triable issue as to a likelihood of confusion. Indeed, I go further and say that the Applicant has a strongly arguable case. Accordingly, it has a strongly arguable case on trade mark infringement and, although the passing-off case may present more difficulties, a well arguable case there as well. Damages 32. 33. 34. In the present case, damages are clearly not an adequate remedy for the Applicant. Mr Mohammed accepts that neither he nor the first Defendant have significant assets. Assuming that the Applicant is successful at trial, it is not difficult to see that to allow the first Defendant to trade between now and the date of a trial many months away could cause irreparable harm to the reputation of the Applicant if, as it suggests, the quality of service and goods of the first Defendant is inferior to its own. Quite apart from that, there it is almost inevitable that business which goes to the first Defendant will include business which ought to have gone to the Applicant which will therefore have suffered los. Damages, whilst not a complete remedy for the first Defendant, are likely I think to be adequate. The first Defendant has not been trading for long; there is not suggestion that it should cease to trade, only that it should not do so under its existing name. Ms Lawrence suggests that the web-site can easily be modified to substitute a new name and it would be very easy to acquire a new domain name. Of course, the first Defendant would have to start its advertising campaign all over again under its new name and, to some extent, the £50,000 which it has spent getting started may be wasted. But its stock – which is not branded with Miss Boo – can still be sold. In my judgement, the balance of convenience is in favour of granting the injunctive relief sought provided that an adequate cross-undertaking can be given. I will discuss that matter, as well as the form or order, further with the parties when handing down judgment.