Bonnier Media Ltd v. Smith & Anor [2002] ScotCS 347 (01 July 2002)

Bonnier Media Ltd v. Smith & Anor [2002] ScotCS 347 (01 July 2002)

The Scottish courts have jurisdiction over the defenders because the threatened wrong (trade mark infringement and passing off via domain names and websites) is aimed at Scotland and likely to have significant effects there. The pursuers have title to sue as the trade mark owner. The defenders' registration and intended use of domain names similar to the pursuers' trade mark constitutes a prima facie case of trade mark infringement and passing off, as such use is calculated to confuse the public and appropriate the pursuers' goodwill. The balance of convenience favours maintaining the interim interdict to prevent harm. The terms of the interdict are not too wide given the facts and the...

Citation
[2002] ScotCS 347
Parties
Pursuer: Bonnier Media Limited; First Defender: Greg Lloyd Smith; Second Defender: Kestrel Trading Corporation
Jurisdiction
Scotland
Judgment Date
01 July 2002
Procedural Posture
Interim Interdict (injunction) Application / Interim Hearing on Motion to Recall or Restrict Interim Interdict
Outcome
Defenders' motion to recall or restrict interim interdict refused; interim interdict maintained.
Legal Topics
Trade Mark Infringement, Passing Off, Jurisdiction (brussels Convention), Cybersquatting, Interim Interdicts, Internet Domain Names
Intellectual Property Civil Procedure Private International Law Trade Mark Infringement Passing Off Jurisdiction (brussels Convention) Cybersquatting Interim Interdicts +1 more

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Parties

Bonnier Media Limited

Pursuer

Greg Lloyd Smith

First Defender

Kestrel Trading Corporation

Second Defender

Procedural Posture

Interim Interdict (injunction) Application / Interim Hearing on Motion to Recall or Restrict Interim Interdict

Legal Issues

  1. 1 Whether Scottish courts have jurisdiction over foreign defendants for threatened trade mark infringement and passing off via domain names and websites
  2. 2 Whether pursuers have title to sue on the relevant trade mark
  3. 3 Whether a prima facie case of trade mark infringement and/or passing off is established

Ratio Decidendi

The Scottish courts have jurisdiction over the defenders because the threatened wrong (trade mark infringement and passing off via domain names and websites) is aimed at Scotland and likely to have significant effects there. The pursuers have title to sue as the trade mark owner. The defenders' registration and intended use of domain names similar to the pursuers' trade mark constitutes a prima facie case of trade mark infringement and passing off, as such use is calculated to confuse the public and appropriate the pursuers' goodwill. The balance of convenience favours maintaining the interim interdict to prevent harm. The terms of the interdict are not too wide given the facts and the...

Court Disposition

Defenders' motion to recall or restrict interim interdict refused; interim interdict maintained.

Orders

  • Interim interdict pronounced on 23 May 2002 to remain in force, prohibiting defenders from passing themselves off as the pursuers or infringing the pursuers' trade mark by registering, setting up, administering, or maintaining websites using the name 'business a.m.' or similar domain names.