International Businesss Machines Corporation & Anor v Web-Sphere Ltd & Ors

International Businesss Machines Corporation & Anor v Web-Sphere Ltd & Ors

'WEBSPHERE' was validly registered as a Community trademark. The difference between 'WEBSPHERE' and 'Web-Sphere' is insignificant and would go unnoticed by the average consumer; the goods and services are identical or similar. The 'own name' defence does not apply as the name was adopted after IBM's mark was well-known and without honest practices. There is a likelihood of confusion. The individual defendants are jointly liable as they shared a common design with the company. The claim for malicious falsehood fails as the statements, though false and malicious, were not likely to cause pecuniary damage to IBM.

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
Civil (trademark Infringement and Malicious Falsehood) / Judgment After Trial
Outcome
Claim for trademark infringement succeeds; claim for malicious falsehood fails.
Legal Topics
Community Trademark Infringement, Malicious Falsehood, Own Name Defence, Likelihood of Confusion, Joint Tortfeasor Liability
Intellectual Property Trademark Law Community Trademark Infringement Malicious Falsehood Own Name Defence Likelihood of Confusion 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

Civil (trademark Infringement and Malicious Falsehood) / 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 applies

Ratio Decidendi

'WEBSPHERE' was validly registered as a Community trademark. The difference between 'WEBSPHERE' and 'Web-Sphere' is insignificant and would go unnoticed by the average consumer; the goods and services are identical or similar. The 'own name' defence does not apply as the name was adopted after IBM's mark was well-known and without honest practices. There is a likelihood of confusion. The individual defendants are jointly liable as they shared a common design with the company. 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 orders to be determined after hearing parties.