27 June 2006

Trade Marks and Domain Names: Ellerman Investments Ltd v Vanci

This is an interesting example of how the courts can still be useful in a domain name dispute.

The claimants included the Ritz Hotel, The Ritz Club, and the Ritz Club London Online. As one might imagine, they had registered a number of national and Community trade marks that included the word RITZ in class 21 including UK registered trade mark no. 1509163 for RITZ for "gaming services" and CTM no. 1703974 for RITZ for the "provision of gaming services accessed via local and world-wide computer networks". The defendants were had registered the domain name which was the URL for a website called RoyalPlaza.Net which contained information about gaming with links to third party sites such as Pacific Poker, Party Poker and Poker Room. The claimants complained of trade mark infringement to which complaint the defendants responded by registering 5 more sites containing the letters RITZ, namely , , , and .

The claimants sued for infringement of their trade marks under s.10 (1) and (2) of the Trade Marks Act 1994 and art 9 (1) (a) and (b) of the Community Trade Mark Regulation and applied for summary judgment under CPR Part 24 and the application came on before Judge Richard Havery QC.

The defendants' case was that they were simply concerned with supplying comprehensive and impartial information about poker and that they were not directly concerned with or linked to gaming sites. One of them gave evidence that the defendants were divorced from any gambling activity whatever. They did not allow any third party related advertising. They did not offer any downloads of gambling games other than for academic, fun or educational use. It is abundantly clear, however, on the evidence that Pacific Poker, Party Poker and Poker Room were portals with links to gaming sites.

The judge rejected the claimants' submission that the defendants were using an identical mark for identical services. Ingeniously, Helyn Mensah had referred to the following words in Lord Justice Jacob's judgment in Reed Executive Plc and others v Reed Business Information Ltd and others [2004] EWCA Civ 159 (3 March 2004):
"It was over "Reed Business Information" that battle was joined. The composite is not the same as, for instance, use of the word "Reed" in the sentence: "Get business information from Reed." In the latter case the only "trade-marky" bit would be "Reed". In the former, the name as a whole is "Reed Business Information." The use of capital letters is of some visual significance – it conveys to the average user that "Business Information" is part of the name. If the added words had been wholly and specifically descriptive – really adding nothing at all (e.g. "Palmolive Soap" compared with "Palmolive") the position might have been different. But "Business Information" is not so descriptive – it is too general for that."
Helyn argued that "poker" in "ritzpoker" was not really trade-marky. Not altogether surprisingly, his lordship did not buy that one. But he gave her judgment on the basis of similar mark and similar services. He considered that the provision of links to competing sites belied the defendants' argument that they were not providing gaming services.

By coincidence I have also been in front of the same judge in a Part 24 application. Mine is a somewhat heavier application and we should get judgment at 2 pm on Monday. It is an interesting case and quite an important one too, but as I am in the case I shall leave it to someone else to blog about it. All I shall say about it is that ring binders have taken over my room in chambers which is why I have not keeping up with my posts over the last few weeks. Rest assured, however, that normal service is just about to be restored.

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