International Businesss Machines Corporation & Anor v Web-Sphere Ltd & Ors [2004] EWHC 529 (Ch) (17 March 2004)

International Businesss Machines Corporation & Anor v Web-Sphere Ltd & Ors [2004] EWHC 529 (Ch) (17 March 2004)

'WEBSPHERE' is a validly registered Community trademark; 'Web-Sphere' is, for the average consumer, identical or confusingly similar to 'WEBSPHERE' for the relevant goods and services. The 'own name' defence does not apply as the name was adopted after IBM's mark was established and not in accordance with honest practices. There is a likelihood of confusion. Mr de Serville and Mr Markson are jointly liable with Web-Sphere Ltd for infringement. The claim for malicious falsehood fails as the statements, though false and malicious, were not likely to cause pecuniary damage to IBM.

Citation
[2004] EWHC 529 (Ch)
Parties
Claimant: International Business Machines Corporation; Claimant: IBM United Kingdom Ltd; Defendant: Web-Sphere Ltd; Defendant: Richard de Serville; Defendant: David Markson
Jurisdiction
England and Wales
Judgment Date
17 March 2004
Procedural Posture
Trademark Infringement and Malicious Falsehood Claim / Judgment After Trial
Outcome
Claim for trademark infringement succeeds; claim for malicious falsehood fails.
Legal Topics
Community Trademark Infringement, Malicious Falsehood (trade Libel), Distinctiveness of Trademarks, Likelihood of Confusion, Own Name Defence, Joint Tortfeasor Liability
Intellectual Property Trademark Law Community Trademark Infringement Malicious Falsehood (trade Libel) Distinctiveness of Trademarks Likelihood of Confusion Own Name Defence Joint Tortfeasor Liability

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Parties

International Business Machines Corporation

Claimant

IBM United Kingdom Ltd

Claimant

Web-Sphere Ltd

Defendant

Richard de Serville

Defendant

David Markson

Defendant

Procedural Posture

Trademark Infringement and Malicious Falsehood Claim / Judgment After Trial

Legal Issues

  1. 1 Whether 'WEBSPHERE' was validly registered as a Community trademark
  2. 2 Whether Web-Sphere Ltd's use of 'Web-Sphere' infringed IBM's trademark
  3. 3 Whether the 'own name' defence applied to Web-Sphere Ltd

Ratio Decidendi

'WEBSPHERE' is a validly registered Community trademark; 'Web-Sphere' is, for the average consumer, identical or confusingly similar to 'WEBSPHERE' for the relevant goods and services. The 'own name' defence does not apply as the name was adopted after IBM's mark was established and not in accordance with honest practices. There is a likelihood of confusion. Mr de Serville and Mr Markson are jointly liable with Web-Sphere Ltd for infringement. The claim for malicious falsehood fails as the statements, though false and malicious, were not likely to cause pecuniary damage to IBM.

Court Disposition

Claim for trademark infringement succeeds; claim for malicious falsehood fails.

Orders

  • Court has jurisdiction to require Web-Sphere Ltd to change its name and cease using or assign the domain names www.web-sphere.com, www.web-sphere.net, and www.web-sphere.org to IBM. Final relief to be determined after hearing parties.