UK-Yell Limited v Louis Giboin & 2 Ors

8/6/2019 UK-Yell Limited v Louis Giboin & 2 Ors

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Case No: PAT 09138Neutral Citation Number: [2011] EWPCC 009IN THE PATENTS COUNTY COURT

St. Dunstans House

133-137 Fetter LaneLondon EC4A 1HD

Date: 04/04/2011

Before :

HIS HONOUR JUDGE BIRSS QC

- - - - - - - - - - - - - - - - - - - - -Between :

YELL LIMITED Claimant- and -

(1) LOUIS GIBOIN

(2) ZAGG LIMITED

(3) ZAGG GLOBAL LIMITED Defendants

- - - - - - - - - - - - - - - - - - - - -- - - - - - - - - - - - - - - - - - - - -

MISS DENISE MCFARLAND (instructed by OLSWANG LLP) for the ClaimantMr Louis Giboin represented himselfand the Second and Third Defendants

Hearing dates: 28th February, 1st March 2011- - - - - - - - - - - - - - - - - - - -

Judgment


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JUDGE BIRSS :

Topic Para

Introduction 1

The proceedings up to and including trial 10The witnesses 25

The law 33

- Infringement under Art 5(1)(a)/s10(1) 36

- Infringement under Art 5(1)(b)/s10(2) 40

- Infringement under Art 5(2) /s10(3) 42

- Infringement on the internet 49

- Passing off 57

- Joint liability 60

The facts

- Yellow Pages and the walking fingers logo in the UK 65- Yellow Pages internationally 77

- Conclusion from the point of view of the UK public 90

- The zagg.eu and transport-yellow-pages.com websites 92

- Development of the Zagg system 99

- The Zagg system today 103

The issues 106

(i) Do the websites infringe? 110

- A business directory service and a database relating to transport services andtransport companies 111

- Advertising services 115

- Conclusion on services 117(a) transport-yellow-pages.com 119

- Trade Mark 391 121

- Trade Mark 121 131

(b) zagg.eu 137

(ii) Passing off 144

(iii) Are the websites directed to the UK? 162

(iv) Who is liable? 171

(v) The domain name 185

(vi) The defendants counterclaims 190

Conclusion 196Annexes

- Annex 1 Registered trade mark 391

- Annex 2 Specification of services for trade mark 121

- Annex 3 The Truck Logo

Introduction

1. This is an action for trade mark infringement and passing off.


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2. The claimant Yell is the company behind the well known Yellow Pages directories inthe United Kingdom. It also operates an online directory service at yell.com and atelephone directory service. The number for the directory service is 118 24 7. Yellwas formerly owned by British Telecommunications Plc and prior to that the YellowPages directory business was carried out by the General Post Office (GPO).

3. The first defendant Mr Giboin is a software development and IT project manager.Zagg Ltd and Zagg Global Ltd, the second and third defendants, are companies whichare associated with Mr Giboin. He is a director of both. The defendants have notinstructed lawyers to act for them. Mr Giboin represents himself and has representedthe two corporate defendants.

4. Yell owns two United Kingdom registered trade marks:

i) No 1,283,391 for the words YELLOW PAGES registered on 16th

June 1989 in class 35. The specification of services is:

Advertising and publicity services; secretarial and typewriting services;

telephone answering services; data processing services; distribution ofprinted advertising matter and promotional material by post; market research

and marketing studies services; direct mail advertising services and

compilation of direct mailing lists; all included in Class 35

ii) No 2,329,121 for a device including a stylised depiction of fingerswalking across the open pages of a book together with the wordsYELLOW PAGES registered on 6th August 2004 in classes 09, 16, 35,36, 37, 38, 39, 41, 42, 43 and 45. In fact, this registration consists of

two trade marks, the difference between them being the way in whichthe words Yellow Pages stand beside the walking fingers. An image ofthe two marks and the full specification of services are set out inannexes 1 and 2 to this judgment.

5. The stylised depiction of walking fingers in registered trade mark No. 2,329,121 iscalled the walking fingers logo. The precise form of the walking fingers logo asYell has used it has varied over time. All the variants in the papers in this caseconvey the same idea of fingers walking, often through directory pages. Theymanifestly hark back to the slogan Let your fingers do the walking and convey thesame image. I will not distinguish between them unless a particular point arises.

6. There are variants of the walking fingers logo.

7. Yell also claims to be the owner of a substantial goodwill and reputation in the nameYELLOW PAGES and the walking fingers logo relating to directory services.

8. Yell contends that the defendants have infringed its registered trade marks andcommitted acts of passing off. The nub of the dispute relates to two websites:www.zagg.eu and www.transport-yellow-pages.com. The prefix www is irrelevant.The sites are referred to as simply zagg.eu or transport-yellow-pages.com. Yellcontends that these sites are controlled by the defendants and operate a business

directory service and a database relating to transport services and transportcompanies. Yell complains of the name of the latter site itself and the use on both


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sites of the words YELLOW PAGES and the walking fingers logo. Yell argues thatas a result the defendants are committing acts of trade mark infringement and passingoff.

9. The defendants do not deny that the websites operate a database and directory of

transport businesses and services and use the name YELLOW PAGES and thewalking fingers logo. The defendants principal point is that the websites are not UK

based and therefore are not within the jurisdiction of the court. They operate andconduct transactions abroad. The defendants also argue that on the internet neitherYELLOW PAGES nor the walking fingers logo are distinctive because both are usedall over the world in relation to directories which have nothing to do with Yell. Theysubmit these marks are generic on the internet. A particular point the defendantstake is that the term transport-yellow-pages in transport-yellow-pages.com simplymeans transport directory.

Proceedings up to and including trial

10. This action began in the High Court. The claim form was issued on 28th September2009 and Particulars of Claim served at the same time. The defendants filed a firstDefence Statement on 19th October 2009. This document sets out Mr Giboins casefully. A further shorter Defence Statement was filed on 4th November 2009. Thelatter but not the former bears a statement of truth signed by Mr Giboin. Replieswere filed by the claimant to each defence.

11. On 30th November 2009 the action was transferred to the Patents County Court by theOrder of Master Bowles. A CMC was heard on 9th July 2010 before His HonourJudge Fysh QC and directions were given for trial. The 9th July order also removed a

fourth defendant from the action. The fourth defendant was another Zagg company -Zagg Portal Ltd. This company had been dissolved on 14th May 2010 and struck offthe companies register. There was no point in its being a party to the proceedings.

12. On 12th January 2011 I heard a telephone application by Mr Giboin. The applicationwas for disclosure by the claimant of various documents. Mr Giboin has beenworking in Qatar and called into the hearing from there. It became clear during thecourse of the application that the point of Mr Giboins hearing was a rhetorical one.He was seeking documents from the claimant which did not exist. So, for example,Mr Giboin sought documents from the claimant to show that Yell made little or nouse of the domain name yellowpages.co.uk. A further aspect of the application

related to Yells alleged membership of an American organisation called the YellowPages Association. Mr Giboin sought to establish that Yell, or a company in itsgroup, was a member of that organisation.

13. The order made on 12th January included a direction for the evidence to be filed by24th January. Yell filed their main witness statements within that period and MrGiboin had filed some of his material in that timeframe as well. However, both sidesalso filed further material afterwards, and on Friday 25th February the claimant madean urgent telephone application to deal with very late evidence which had been filed

by Mr Giboin. Mr Giboin did not attend that telephone hearing. It appeared that anew point might be emerging from the material Mr Giboin had submitted. The new

material seemed to suggest that other individuals were responsible for the websites.The claimant was understandably concerned that an adjournment of the trial might


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prove necessary to ensure that the proper parties were before the court. The claimantwas also understandably concerned that yet more material would emerge between theFriday and the trial on Monday morning.

14. However, analysing the material as it stood it appeared that Mr Giboin was seeking to

explain how other people were also involved in the arrangements that had been maderather than seeking to deny his own involvement or pass sole responsibility on toothers. It was clear that the case should go ahead with all the material filed by bothsides.

15. The trial commenced on 28th February. Miss Denise McFarland instructed byOlswang represented Yell. Mr Giboin represented himself and has represented thetwo corporate defendants.

16. On the claimants side Yell relied on witness statements from Paul Manwaring, LukeHumble and David Saville. It also relied on two Hearsay notices served under the

Civil Evidence Act. Mr Humble lives in Australia and his statement was providedunder a hearsay notice.

17. On the defendants side there were witness statements from James Spong, DuncanGarden, Glenn Spong, Terence Zhang, Andrew Smith and Alex Spong. There wasalso an email from Cindi Aldrich of the American Yellow Pages Association. MrGiboin had indicated that none of these witnesses would be available for cross-examination as they were all resident abroad. Mr Giboin himself provided twowitness statements and was available for cross-examination.

Conduct of the trial

18. On the morning of the trial, the court and Yells solicitors received an email from MrGiboin indicating that his train ticket was not valid for the train he had expected tocatch to arrive at court for 10:30. He stated, If you want to continue, I am sure MrManwaring can give his speech on Yells advertising budget for an hour or so. Hesuggested that he could be contacted on Skype, which he could pick up on his laptopon the train. I directed that the trial should commence as planned at 10:30 with MissMcFarland opening the case for Yell. There were various matters for counsel to openfor which Mr Giboin did not need to be present, given that there was a transcript ofthe proceedings which he could read that evening. Certain more substantive mattersin the opening were left over to address when Mr Giboin arrived. He arrived at about

12:30 pm. Following counsels opening I gave Mr Giboin permission to make anopening address as well.

19. Miss McFarland submitted that this was a case which could and should be heard intwo days. In my judgment she was entirely right and I gave directions during the trialto facilitate that.

20. Mr Giboin indicated that he wanted to demonstrate various websites on the internetusing computer facilities and a projector which had been set up in court for that

purpose. He estimated he would require 10 minutes to do that; I directed that thedemonstration would take no more than half an hour.


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21. Mr Giboin indicated that he did not wish to cross-examine Mr Saville (who wasavailable to be cross-examined if required), but he did wish to cross-examine MrManwaring. Mr Giboin estimated he would need 5 minutes to cross-examine MrManwaring. I directed that the cross-examination would take no more than half anhour.

22. Yell indicated that they did not wish to cross-examine Mr Giboin. In the course of hissubmissions as a litigant in person Mr Giboin made various statements many of whichwere not within his witness statements. Yell did not object and indeed Yell relies onsome of Mr Giboins statements as admissions of various matters.

23. Once the cross-examination of the sole witness giving oral testimony (MrManwaring) was complete, Mr Giboin made his closing address. I directed that MrGiboins submissions should be complete by 2:30 pm on the second day (Tuesday) soas to ensure that Miss McFarlands closing could be accommodated by the close of

business that day.

24. Mr Giboin adhered to the timetable I set, with short extensions as necessary. The trialconcluded at the end of the second day.

The witnesses

25. The claimants main witness was Paul Manwaring. He is Senior Legal Counsel atYell. He has worked there since September 2009. His witness statement dealt withYells UK goodwill and reputation in the marks Yellow Pages and the walking fingerslogo and the efforts Yell has gone to to protect its rights. He then turned to Yellsunderstanding of the defendants activities. Mr Manwaring was cross-examined by

Mr Giboin. He was a good witness.

26. One matter which arose was a copy of a web page entitled PHP Yellow PagesSoftware, which Mr Giboin had emphasised in his opening. After court on the firstday, Mr Manwaring did some research on the internet about the web page. In chief,Mr Manwaring explained what he had done. He said that his research showed that thesoftware was being sold by a business registered in Panama and the web page wasaimed at the North American market. In cross-examination Mr Giboin rightly put toMr Manwaring that this document had been annexed to the defence filed in October2009 and questioned whether he had read it. Mr Manwarings explanation was

perfectly proper and sensible and I accept it. He had only been in the company for a

few weeks when the defence came in and he was not involved. He had read thedefence but had not focussed on this annex (it is one of 100 pages of annexes).

Nothing about this point undermined Mr Manwarings credibility in the slightest.

27. Yell also relied on the evidence of Luke Humble. He is a specialist in onlinemarketing and website design. He is independent of Yell. He drew Yells attention tothe defendants websites in the first place. The purpose of this evidence from Yells

point of view is that it submits Mr Humble was misled by the defendants websitesinto associating them with Yell. He was not available for cross-examination since henow lives in Australia. Mr Giboin described him as a numpty. For those without the

benefit of a Scottish education, a numpty is a derogatory expression referring to an

ignorant stupid person. I will deal with Mr Humbles evidence in context below.


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28. Yells other witness was David Saville. Mr Saville was a former employee of Yell.After leaving Yell in 1998 he formed Saville Rossiter-Base, a company specialising inmarket research particularly in the telecommunications and banking sectors. He gaveevidence addressing Yells UK goodwill and reputation both online and via theYellow Pages published directories. He also gave a brief opinion about how the

public would be likely to regard the defendants websites.

29. Apart from Mr Giboin himself, the defendants witnesses were as follows:-

iii) James Spong. He lives in Australia. His evidence was that YellowPages of Australia has two trade marks: the name yellow pages and thewalking fingers logo. There is an Australian websitewww.yellowpages.com.au. He confirmed that from Australia it is

possible to view certain websites including www.yell.com (theclaimants website), certain Spanish websites with names whichgenerally involve the words paginas amarillas (i.e. yellow pages in

Spanish) and www.yellowbook.com.

iv) Duncan Garden. He lives in Azerbaijan and works as a drilling fluidsengineer for Halliburton Eurasia. He was asked by Mr Giboin to lookat the local country yellow pages. He stated that this is a websitecalled www.yellowpages.az/yp/. He said that Yellow Pages ofAzerbaijan has a trade mark and displays an image of the websitewhich combines some Cyrillic text, some Roman script in English,including the words Yellow Pages Azerbaijan, and the walkingfingers logo. He confirmed that the same websites James Spongaccessed from Australia, are accessible from Baku, Azerbaijan.

v) Glenn Spong. He lives in Australia. He explained that the TransportYellow Pages logo using a truck was designed by him for and on

behalf of www.transport-yellow-pages.com. He said the basis was notwww.yell.com but an inverse of the Yellow Pages Association logo.

vi) Terence Zhang. He is resident in Sichuan, China. His witnessstatement was a barely legible photocopy. His evidence was that MrGiboin had come to China in 2008 and was there for several months.As I understand the statement, Mr Zhang was one of the individualswho worked on developing the zagg.eu website and his witness

statement also states that Mr Giboin managed the development work.Mr Zhang also states (I believe) that we (i.e. at least himself and MrGiboin) worked with companies in India (and somewhere else) on this

project which Mr Giboin was managing. After the trial, I received anemail message from Mr Giboin with a clear copy of Mr Shangsstatement which confirmed that we worked for companies in the UK,Australia and India.

vii) Andrew Smith. He is a website developer and tutor for HTML trainingcourses (HTML or HyperText Markup Language is one of the maincomputer programming languages used to create websites). Mr Smith

met Mr Giboin in 1998 when he lectured Mr Giboin as part of a webdevelopers course. They met again when Mr Giboin approached his


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company to become involved in a project to develop a website calledHauliers UK Network. Mr Giboin managed to get 4 companiesinvolved in the exercise by agreeing a share value based on the successof the company and the fact that each partner completed their agreedtask. He stated that Mr Giboin knew technically all the elements and

served as the designer and architect for the project. Mr Giboin did notdo any of the development work, his role was of architect, design and

project manager. Mr Smith then deals with the origins of the Zaggsystem. Although only based in Lanark, Mr Giboin did not seek to callMr Smith as a live witness, but Yell did not object to the statement.

viii) Alex Spong. He lives in Australia (I believe at the same address asJames Spong). Alex Spong is the sole director of Zagg Australia PTYLtd and is authorised to speak on its behalf. Zagg Australia PTY Ltdwas initially involved with Zagg.eu and Transport Yellow Pages but,according to Alex Spong, is no longer involved. According to Mr

Giboins Facebook page Alex Spong is his nephew.

30. Mr Giboin is described by Mr Smith as a respected designer and architect of websystems and as someone who has always been innovative. Mr Giboin describedhimself as a project manager. The projects he manages are information technology

projects. He has worked on projects for a number of blue chip organisations in thepast including HBOS, Orange and Scottish Widows. He has also described himself asa scrum master, which means essentially the same thing as project manager in thiscontext.

31. Mr Giboins oral address included a mixture of submissions and matters of evidence.

Although he was not cross-examined, it is worth recording that he was an articulateexponent of his case, quite capable of getting his point across. He had a tendency onoccasions to get carried away with his argument. He answered questions posed tohim from the bench directly.

32. At one stage, when the court had risen, I was told that Mr Giboin had objected to oneof counsels submissions and accused counsel of lying. Such an accusation wasentirely wrong and wholly unwarranted. The accusation was about a submission fromcounsel about something Mr Giboin had said in court. Miss McFarlands submissionswere solidly and soundly based on the transcript of the proceedings at all times. MrGiboin owed counsel an apology, which he gave.

The law

33. The Trade Marks Act 1994 implemented Council Directive 89/104/EEC toapproximate the laws of the Member States relating to trade marks and made

provision in connection with Council Regulation (EC) No. 40/94 on the CommunityTrade Mark. In 2008, a codified version of the directive was produced, which isDirective 2008/95/EC of 22 October 2008. The directive includes the following

provisions:

Article 5

Rights conferred by a trade mark


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1. The registered trade mark shall confer on the proprietor exclusive rightstherein. The proprietor shall be entitled to prevent all third parties not havinghis consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods orservices which are identical with those for which the trade mark isregistered;

(b) any sign where, because of its identity with, or similarity to, the trademark and the identity or similarity of goods or services covered by thetrade mark and the sign, there exists a likelihood of confusion on the

part of the public, which includes the likelihood of associationbetween the sign and the trade mark.

2. Any Member State may also provide that the proprietor shall be entitled to

prevent all third parties not having his consent from using in the course oftrade any sign which is identical with, or similar to, the trade mark in relationto goods or services which are not similar to those for which the trade mark isregistered, where the latter has a reputation in the Member State and whereuse of that sign without due cause takes unfair advantage of, or is detrimentalto, the distinctive character or the repute of the trade mark.

3. The following, inter alia, may be prohibited under paragraphs 1 and 2:

[](b) offering the goods, or putting them on the market or stocking them for

these purposes under that sign, or offering or supplying servicesthereunder;

34. Sections 10(1) to 10(4) of the 1994 Act implement these provisions.

35. Yell contend that the defendants have infringed under all three of s10(1) / Art5(1)(a)(identical mark/ identical services); s10(2)/Art 5(1)(b) (likelihood of confusion due toidentical or similar mark and identical or similar services); and s10(3)/Art 5(2) (unfairadvantage or detriment to distinctive character or repute). Yell made no detailedsubmissions on the law on these issues.

Infringement under Article 5(1)(a) /s10(1)

36. A significant aspect of this case involves a submission that the defendants have usedidentical marks on identical services. The correct test for identity of marks wasreferred to and explained by the Court of Justice in Case C-291/00 Societe LTJ

Diffusion v Sadas Vertbaudet[2003] FSR 608. At para 54 the Court said:

the answer to the question referred must be that Art 5(1)(a) ofthe Directive must be interpreted as meaning that a sign isidentical with the trade mark where it reproduces, without any

modification or addition, all the elements constituting the trademark or where, viewed as a whole, it contains differences so


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insignificant that they may go unnoticed by an averageconsumer.

37. In Reed Executive PLC v Reed Business Information Ltd. [2004] EWCA Civ 159;[2004] RPC 40 Jacob LJ said at paragraph 26:

Of importance here is the recognition that an addition to aregistered trade mark may take the case outside one ofidentity (see para. [51]). This is clearly sensible - one wordcan qualify another so as to change its impact

38. The question of identity of services was also considered in Reed v Reed. The judgment of Jacob LJ, with whom Auld and Rix LJJ agreed, considered it atparagraphs 42 to 76. In summary, the principles I derive from Jacob LJs judgmentare:

ix) Specifications of services should be scrutinised carefully and not givena wide construction, they should be confined to the core or substance ofthe possible meanings [per Jacob LJ paragraphs 43-44, citing Avnet v

IsoAct[1998] FSR 16]

x) A specification of goods or services cannot change its meaning overtime [per Jacob LJ paragraphs 46-47];

xi) However a new article can fall within an old specification [Jacob LJparagraphs 48 50]

39. Thus, in the Reedcase the question was not whether employment agency serviceshas changed its meaning over time because of the advent of the internet but whetherthe services provided over the internet by the defendant in that case were those of anemployment agent [per Jacob LJ paragraph 52].

Infringement under Article 5(1)(b)/ s10(2)

40. Yell also relies on this limb (identical or similar marks on identical or similar goodswhereby there is a likelihood of confusion). In Och-Ziff Management Europe Ltd v.OCH Capital LLP [2010] EWHC 2599 (Ch) at paragraphs 72 74, Arnold J citedwith approval the summary of the case law of the CJEU used by the UK Trade MarksRegistry for the purpose of considering likelihood of confusion. The summary isderived from the judgments of the CJEU in Case C-251/95 Sabel BV v. Puma AG.[1997] ECR I-6191; Case C-342/97Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen

Handel BV[1999] ECR I-3819; Case C-334/05 P Shaker di L Laudato & C SAS v.OHIM[2007] ECR I-4529; Case C-3/03 Matratzen Concord v. OHIM[2004] ECR I-3657; Case C-120/04 Medion AG v. Thomson Multimedia Sales Germany & AustriaGmbH[2005] ECR I-8551; Case C-39/97 Canon Kabushiki Kaisha v. Metro GoldwynMayer Inc [1998] ECR I-5507; and Case C-425/98 Marca Mode CV v. Adidas AG[2000] ECR I-4861. I will follow the same approach as Arnold J.

41. In Och-Ziff, Arnold J also pointed out that, in the infringement context, likelihood of

confusion is to be determined by reference to the use which has actually been made of


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the sign in context (as opposed to the consideration of notional fair use in theregistration context).

Infringement under Article 5(2) / s10(3)

42. Although Article 5(2) appears to be restricted to cases in which the goods are notsimilar to those registered, in fact it is not so limited: Case C-292/00Davidoff & CieSA and Zino Davidoff v Goffkid [2003] 1 WLR 1714.

43. As Floyd J explained inHasbro v 123 Nahrmittel2011 [EWHC] 199 (Ch) (paragraph213), the provision is concerned with extending the protection for marks which have areputation beyond the protection which is available for marks which do not. In CaseC-301/07 PAGO International GmbH [2010] ETMR 5, the Court of Justiceconsidered the reputation required for the corresponding test in the CTM Regulationand said that:

The degree of knowledge required must be considered to bereached when the Community trade mark is known by asignificant part of the public concerned by the products orservices covered by the mark

44. The position is the same under the Directive Case C-375/97 General Motors Corp.v Yplon SA [1999] ECR I-5421.

45. For there to be infringement it is also necessary to establish the existence of a link orconnection in the minds of the relevant public between the marks and the signcomplained of: see Case C-487/07LOreal v Bellure NVat para 36. In paragraph 218

ofHasbro, Floyd J found that even if he had been wrong about the risk of confusion(relevant to Art 5(1)(b)), the use of signs by the defendant in that case was certainlysufficient to bring the marks to mind in a significant class of consumers, even if theeffect of the signs is not sufficient for them to assume that there is common origin.

46. Finally, the use of the sign complained of must take unfair advantage of, or bedetrimental to, the distinctive character or the repute of the mark relied on.

47. In paragraph 219 of Hasbro, Floyd J held that on the facts of the case before him therequirement of unfair advantage was established because:

by bringing the mark to the mind in a way which falls short ofactual confusion, the defendants are taking advantage of thegoodwill which attaches to the marks. To those who make theconnection, the signs complained are misappropriating thecachet which is attached to the marks.

48. I will follow the same approach as Floyd J.

Infringement on the internet

49. A particular feature of this case is that the activity complained of all takes place on theinternet. Indeed, much of Mr Giboins defence rests on the proposition that theinternet is a place, a kind of global territory separate and distinct from the UK.


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50. In the P.Diddy case: Richard Dearlove v Sean Combs [2007] EWHC 375 (Ch),Kitchin J considered the law as it applies to the use of trade marks on websites as setout in 800-FLOWERS Trade Mark[2000] FSR 697 (Jacob J as he then was), and onappeal at [2001] EWCA Civ 721 (esp. Buxton LJ) and also Euromarket Designs Inc v

Peters and Crate & Barrel Ltd[2001] FSR 20 (Jacob J). Kitchin J dealt with 800-

Flowers as follows:

22. The use of trade marks on websites has now been considered ina number of cases. Two are of particular assistance in the contextof the present application. In 800-FLOWERS Trade Mark [2000]FSR 697 Jacob J had to consider whether or not Internet use of themark 1-800 FLOWERS constituted a use of that mark in thiscountry. He said this at p.705:

Reliance is also placed on Internet use of 1-800 FLOWERS.This name (with the addition of Inc.) is used for a website. Mr

Hobbs submitted that any use of a trade mark on any website,wherever the owner of the site was, was potentially a trademark infringement anywhere in the world because website useis in an omnipresent cyberspace; that placing a trade mark on awebsite was putting a tentacle into the computer user's

premises. I questioned this with an example: a fishmonger inBootle who put his wares and prices on his own website, forinstance, for local delivery can hardly be said to be trying tosell the fish to the whole world or even the whole country. Andif any web surfer in some other country happens upon thatwebsite he will simply say this is not for me and move on.

For trade mark laws to intrude where a website owner is notintending to address the world but only a local clientele andwhere anyone seeing the site would so understand him would

be absurd. So I think that the mere fact that websites can beaccessed anywhere in the world does not mean, for trade mark

purposes, that the law should regard them as being usedeverywhere in the world. It all depends upon the circumstances,

particularly the intention of the website owner and what thereader will understand if he accesses the site. In other fields oflaw, publication on a website may well amount to a universal

publication, but I am not concerned with that.

23. On appeal (reported at [2001] EWCA Civ 721; [2002] FSR 12)Buxton LJ expressed some concern that use of a trade mark placedon the Internet at a location outside the UK may constitute use inthe UK simply because someone here chooses to download it. Ashe explained at [137] [138]:

137. I would wish to approach these arguments, andparticularly the last of them, with caution. There is somethinginherently unrealistic in saying that A uses his mark in theUnited Kingdom when all that he does is to place the mark onthe Internet, from a location outside the United Kingdom, andsimply wait in the hope that someone from the United


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Kingdom will download it and thereby create use on the part ofA. By contrast, I can see that it might be more easily arguablethat if A places on the Internet a mark that is confusinglysimilar to a mark protected in another jurisdiction, he may doso at his own peril that someone from that other jurisdiction

may download it; though that approach conjured up inargument before us the potentially disturbing prospect that ashop in Arizona or Brazil that happens to bear the same nameas a trademarked store in England or Australia will have to actwith caution in answering telephone calls from those latter

jurisdictions.

138. However that may be, the very idea of use within acertain area would seem to require some active step in that areaon the part of the user that goes beyond providing facilities thatenable others to bring the mark into the area. Of course, if

persons in the United Kingdom seek the mark on the Internet inresponse to direct encouragement or advertisement by theowner of the mark, the position may be different; but in such acase the advertisement or encouragement in itself is likely tosuffice to establish the necessary use. Those considerations arein my view borne out by the observations in this court in

Reuter v Mulhens [1954] Ch. 50. The envelopes on the outsideof which the allegedly infringing mark was placed asadvertising matter were sent by post into the United Kingdom

by the defendants. It is trite law that the Post Office is the agentof the sender of a letter to carry it, and thus it was the

defendants who were to be taken to have delivered the letter tothe recipients and to have displayed the mark to them withinthis jurisdiction. No such simple analysis is available toestablish use by the applicant within the jurisdiction if heconfines himself to the Internet.

51. Kitchin J then considered the judgment of Jacob J in the Crate & Barrel case asfollows:

24. The same issue arose again before Jacob J in EuromarketDesigns Inc v Peters and Crate & Barrel Ltd [2001] FSR 20. In

that case the claimant brought proceedings for infringement of itsUK and Community trade mark registrations for the words Crate& Barrel against the defendants who ran a shop in Dublin calledCrate & Barrel selling household goods and furniture. Thedefendants had never traded in the UK and denied they had anyintention to do so. Jacob J said at [21] - [24]:

21. Here the point about the locality of the trade is evenclearer. The defendants' website opening page has a picture of a

piece of furniture with the words Crate & Barrel above. Thetext says: An emporium of furnishings and accessories on fourfloors. We offer a wide range of services including, weddinglists, consultation and furnishings. There follow many picture


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of items. Only two (the hurricane lamp and the beadedcoasters) are said to be within the specification. I will assumethat is so, though the point is not entirely beyond argument.The fact that there are only two items out of many - itemswhich could easily be removed shows the triviality of the

complaint.

22. Now a person who visited that website would see ie. Thatwould be so, either in the original address of the website,crateandbarrel-ie.com or the current form,createandbarrel.ie. The reference to four floors is plainly areference to a shop. So what would the visitor understand?Fairly obviously that this is advertising a shop and its wares. Ifhe knew ie meant Ireland, he would know the shop was inIreland: otherwise he would not. There is no reason whyanyone in this country should regard the site as directed at him.

So far as one can tell, no one has.

23. Now almost any search on the net almost always throws upa host of irrelevant hits. You expect a lot of irrelevant hits.You expect a lot of irrelevant sites, moreover you expect a lotof those sites to be foreign. Of course you can go direct to adesired site. To do that, however, you must type in the exactaddress. Obviously that must be known in advance. Thus in thiscase you could get to the defendants' site either by deliberatelygoing there using the address, or by a search. You could useCrate and Barrel linked Booleanly. One could even use just

one of these words, though the result then would throw upmany more irrelevant results.

24. Whether one gets there by a search or by direct use of theaddress, is it rational to say that the defendants are using thewords Crate & Barrel in the United Kingdom in the course oftrade in goods? If it is, it must follow that the defendants areusing the words in every other country of the world.

25. Miss Vitoria says that the Internet is accessible to the wholeworld. So it follows that any user will regard any website as

being for him absent a reason to doubt the same. Sheaccepted that my Bootle fishmonger example in 800

FLOWERSis that sort of case but no more. I think it is not assimple as that. In 800 FLOWERSI rejected the suggestion thatthe website owner should be regarded as putting a tentacle ontothe user's screen. Mr Miller here used another analogy. He saidusing the Internet was more like the user focusing a super-telescope into the site concerned; he asked me to imagine sucha telescope set up on the Welsh hills overlooking the Irish Sea.I think Mr Miller's analogy is apt in this case. Via the web youcan look into the defendant's shop in Dublin. Indeed the verylanguage and the Internet conveys the idea of the usergoing tothe site visit is the word. Other cases would be different a


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well-known example, for instance, is Amazon.com. Based inthe U.S. it has actively gone out to seek world-wide trade, not

just by use of the name on the Internet but by advertising itsbusiness here, and offering and operating a real service ofsupply of books to this country. These defendants have done

none of that.

52. Finally in theP. Diddy case Kitchin J summarised the position as follows:

25. I believe it is clear from these authorities that placing a mark onthe Internet from a location outside the UK can constitute use ofthat mark in the UK. The Internet is now a powerful means ofadvertising and promoting goods and services within the UK eventhough the provider himself is based abroad. The fundamentalquestion is whether or not the average consumer of the goods orservices in issue within the UK would regard the advertisement and

site as being aimed and directed at him. All material circumstancesmust be considered and these will include the nature of the goodsor services, the appearance of the website, whether it is possible to

buy goods or services from the website, whether or not theadvertiser has in fact sold goods or services in the UK through thewebsite or otherwise, and any other evidence of the advertiser'sintention.

53. A key part of Mr Giboins case before me was the submission that a website ownedand controlled outside the UK could not commit infringements even if UK companiesused it to buy goods or services. For example he submitted This site is non UK base

although the UK can see it. The UK can see every other site in the world. There areno laws supporting a UK company buying on a non UK or global website. Yell cant

force a company not to buy on another site (p3 of Mr Giboins Defence ofApplication of Notice for Feb 24 th 11). Thus, with this approach to the law in mind,Mr Giboin had taken steps to ensure that the websites were not linked to any of theUK corporate defendants and to show that if money was paid in a transaction carriedout via the websites the money was paid to an entity in Miami, Florida. So, in hiswitness statement dated 22nd February 2011, he said of the company Zagg Portal,which had been named as fourth defendant but had been dissolved This company[Zagg Portal] does not exist now and so the ownership [of the websites] has movedwell out of the reach of the UK courts and since that is the case I have no obligation

to tell you where. Its Yells job to show the court the transaction and a company inthe UK to make this case stick.

54. The cases I have mentioned above are authority for the proposition that the fact that awebsite may be owned or controlled from outside the United Kingdom is notdeterminative, nor is the fact that the counterparty to a financial transaction taking

place via the website may be abroad. Therefore, Mr Giboins submissions on the laware wrong. Both factors are matters to be taken into account but there is no law that acompany situated abroad but using a website to commit infringing acts in this

jurisdiction escapes liability.

55. In my judgment the question is always whether an act within the terms of the statutehas been carried out. The activity which amounts to an infringement under the statute


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is the use of a sign in relation to goods or services. The statute is territorial and toinfringe the use of the sign must (for present purposes) be in the United Kingdom.All material circumstances must be considered and these will include the nature of thegoods or services, the appearance of the website, whether it is possible to buy goodsor services from the website and whether or not the advertiser has in fact sold goods

or services in the UK through the website or otherwise. A fundamental question iswhether or not the average consumer of the goods or services in issue within the UKwould regard the advertisement and site as being aimed and directed at him.

56. I will refer to this question below as being whether the website is directed to theUK, rather than repeat the analysis above and recognising that that is an impreciseway of putting it.

Passing off

57. In a case like this one passing off can be defined in terms of three elements: a

protectable and valuable goodwill or reputation in the UK, misrepresentation by thedefendant and damage to the goodwill caused by that misrepresentation (see the Jif

Lemon case: Reckitt & Colman v Borden [1990] RPC 341). The extended definitionof passing off set out in theAdvocaatcase:Erven Warnink v Townend[1980] RPC 31is not germane.

58. Goodwill can consist in a name or device associated in the public mind with abusiness. The defendant makes a misrepresentation if it uses a name on its own goodswhich is sufficiently similar to the claimants name that customers are misled intoassociating the defendants goods with the claimants and if customers are likely to bemisled by such a misrepresentation into buying goods from the defendant when they

think they are buying from the claimant, then the claimants goodwill will bedamaged. Although I have referred to goods, the same principles apply to services.

59. In my judgment the considerations which apply to the question of trade markinfringement on the internet will be the same in the context of the law of passing off.

Joint liability

60. Yell contends that even if Mr Giboin himself is not carrying out acts of trade markinfringement and passing off, he is nevertheless liable for the acts of others (whetherthe Zagg defendant companies or other entities) as a joint tortfeasor. A number of

cases were cited by Yell on this issue.

61. In CBS v Amstrad[1988] UKHL 15 Lord Templeman defined joint infringers as twoor more persons who act in concert with one another pursuant to a common design inthe infringement. In Unilever v Gillette [1989] RPC 583 at p608 to p609 Mustill LJin the Court of Appeal identified the need for a common design to do acts whichamounted to infringement and some act on behalf of the defendant in furtherance ofthat design. The common design or agreed common action need not involve anexplicitly mapped out plan, a tacit agreement will be sufficient. Also there is no needfor a common design to infringe, it is enough if the parties combine to secure thedoing of acts which prove to be infringements.


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62. Yell referred to the judgment of Arnold J in LOreal v eBay [2009] EWHC 1094 forfurther guidance on this issue. The relevant section of Arnold Js judgment is at

paragraphs 343 to 352. There the learned judge dealt briefly with the question ofwhether there is a Community law dimension to accessory liability for trade markinfringement. Since it was common ground before him that there was no conflict

between domestic law and Community law on this issue if the domestic law wasproperly applied he did not need to go into the matter further. Before me neither sidesubmitted that it was necessary to consider a Community law dimension to jointliability for trade mark infringement and I need not do so. In the context of domesticlaw the principal authorities relied on by Arnold J were CBS v Amstradand Unileverv Gillette which I have mentioned above. He also cited the judgment of the Court ofAppeal given by Peter Gibson LJ in SABAF v Menegetti [2002] EWCA 976 whichindicates that the underlying notion is that the party must make the infringing act hisown in order to become liable and the presence of common design, concerted actionor other combination to secure the act will make the combiners liable.

63. Yell also cited MCA v Charly Records [2001] EWCA 1441. That case made it clearthat a director or other officer of a company may in certain circumstances be

personally liable with the company as a joint tortfeasor. A director will not be liablemerely because he is an officer, he must be personally involved in the commission ofthe tort to an extent sufficient to render him liable as a joint tortfeasor. Whether he issufficiently involved is a question of fact, requiring an examination of the particularrole played by him in the commission of the tort. The approach to this joint liability isthe same as the others I have dealt with above. In a case in which a company is found

be the primary infringer a director will be liable as a joint tortfeasor if he procured orinduced those acts to be done by the company or if, in some other way, he and thecompany joined together in concerted action to secure that those acts were done (see

Chadwick LJ paragraph 53).

64. Yell cited the judgments of Lindsay J in Societa Esplosiva Industriali (SEI) vOrdnance technologies (UK) [2007] EWHC 2875 (Ch) and Arnold J in LOreal veBay at paragraphs 360 382. This is the section in Arnold Js judgment in which hegrappled with the difficult question of whether eBay were liable as a result of theirfailure to prevent third parties selling infringing goods via the eBay website. This isdifficulty territory. In my judgment the question of liability as a result of an omissionor failure to act does not arise on the facts of this case and I do not need to address theissue of law.

Facts

Yellow Pages and the walking fingers logo in the UK

65. In the UK the Yellow Pages directory service originated in the late 1960s early1970s when the GPO published printed directories. One of the earliest advertisingcampaigns for Yellow Pages directories was the Let Your Fingers do the Walkingcampaign in the 1970s. It was followed in the 1980s by the famous and awardwinning television advert Fly Fishing by JR Hartley. In the 1990s BT undertookextensive advertising to promote Yellow Pages and the walking fingers logo.

66. In April 2000, the Yellow Pages division of what was by then BT was renamed Yelland the website www.yell.com became a single online portal for both business and


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consumer users of the directory service. Before that, Yells advertisers andconsumers had had access to different sites. In June 2001, BT sold the Yell divisionto a consortium of private equity investors for 2.14 Billion. All the relevantintellectual property rights were sold to the company which became Yell Ltd.

67. Since 2000 Yell has continued to advertise and promote Yellow Pages and thewalking fingers logo extensively. The accounts of Yells advertising agency showthat between 1983 and 1999 132 Million had been spent on advertising. The sumspent between 1999/2000 and 2009 is some 55 Million.

68. Yell earns very substantial revenues from its business. For example its revenues fromprinted directories in 2009 (the last year for which figures are available) were 504Million. In fact this includes both Yellow Pages and Business Pages directories but itis clear that the large majority of the revenue derives from Yellow Pages.

69. Yell offers businesses a free basic listing in the directory but also offers businesses the

opportunity to pay to promote themselves in a more enhanced manner by placingadvertisements. The businesses can choose from a range of advertisement shapes andsizes and specially prepared graphics.

70. Yells accounts include information showing how many unique advertisers are in theirprinted directories and also how many searchable advertisers are available online. In2009 Yell.com had over 200,000 searchable advertisers and Yell earned an average of772 per searchable advertiser. In the same year the paper directories had 390,000unique advertisers earning an average of 1,293 per advertiser for Yell. (The figuresfor the paper directories include both Yellow Pages and Business Pages but again it isclear that Yellow Pages is predominant).

71. The minimum circulation figure for the paper directories in 2009-10 was 23 Million.

72. The evidence on which the foregoing is based was provided by Mr Manwaring. Itwas not disputed by Mr Giboin.

73. In cross-examination Mr Giboin asked Mr Manwaring how much of the 55 Millionspent on advertising related to the website. Mr Manwaring did not know for certain

but estimated that it would be more than 10 Million. I have no difficulty acceptingthat evidence. It is a very substantial sum.

74. Mr Giboin also asked how many hits the Yell.com website received annually. MrManwaring explained that Yell determine a figure for unique visitors to theirwebsite by tracking the unique IP addresses corresponding to visitors to the website.Yell recognises that a unique IP address does not correspond to an individual becausean internet enabled mobile phone will have a different IP address from a home orwork computer and so the same person may appear as two or three IP addresses.Yells website received 10 million unique visitors per month in 2009 on that basis.Yell recognise that the figure does not mean 10 million different individuals visitedthe site in that period. In my judgment however it is a very substantial figure.

75. I should note that the issues arising in Media CAT v Adams [2011] EWPCC 006

which concern the relationship between an IP address and an individual are irrelevanthere.


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76. Mr Savilles evidence was that his firm had carried out extensive research work forYell regarding their market position in the UK. It involves testing recognition ofYellow Pages and the walking fingers logo. His opinion was that Yellow Pages andthe walking fingers logo are well known brands in the UK. Mr Giboin did not cross-examine Mr Saville. I accept this evidence.

Yellow Pages internationally

77. It is clear that the term Yellow Pages and the walking fingers logo are usedextensively elsewhere in the world in the same sort of way as Yell uses them in theUK but by businesses which have nothing to do with Yell. Yell did not dispute this.

78. Mr Giboin relied on a judgment of the United States Court of Appeals for the FederalCircuit (the CAFC) dated 26th July 1995 in BellSouth Corporation v DataNationalCorporation and others case 91-1461. The case was heard by Chief Judge Archerand Circuit Judges Rich and Mayer. BellSouth appealed from the decision of the

Trade Mark Trial and Appeal Board of the United States PTO sustaining anopposition against their application to register a walking fingers logo as a design markfor classified telephone directories. The CAFC held that the walking fingers logowas a generic identifier of classified telephone directories in a (large) part of the USA.

79. The Opinion of Chief Judge Archer sets out the history in section I:

In the early 1960's, American Telephone & TelegraphCompany (AT& T) and its subsidiary regional operatingcompanies that made up the Bell System began using theslogan Let Your Fingers Do The Walking with the Walking

Fingers logo on their classified telephone directories. Theregional Bell System operating companies published telephonedirectories covering their respective geographic regions. Thecompanies sold advertising space in the commercial listings orYellow Pages portion of the directories and gave thedirectories to their customers without charge. The slogan andlogo were the subject of a nation-wide advertising campaign.

The Walking Fingers logo has undergone changes since itsintroduction but the conventional one at issue here was firstintroduced in the early 1970's.

Although the logo is undoubtedly familiar to many, AT& Tnever filed a trademark registration application for this mostfamous version of the Walking Fingers logo. In fact, therecord is quite clear that AT& T never treated the logo as atrademark at all. Instead, prior to the divestiture of BellSouth in1984, AT& T allowed any and all competing publishers oftelephone directories to use the logo on their own directories.

AT& T and its operating companies were not the onlypublishers of telephone directories prior to their divestiture by

AT& T. Independent (i.e., non-Bell) telephone companies anddirectory publishers also published telephone directories and


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sold advertising space in commercial listings. AT& T freelyallowed these different source publishers to use the logo. Therecord is clear that AT& T consciously chose not to enforceany proprietary rights it might have had in the WalkingFingers logo at issue. 1 The Walking Fingers logo has since

been adopted and used by most companies who publishclassified telephone directories.

Footnote reference 1 (above) states:

In 1978, AT& T filed a trademark registration application for atwo fingered version of the Walking Fingers mark. Thisversion is different from the one at issue that is used by most ofthe industry. The two fingered version of the mark wasregistered in 1980 and BellSouth is one of the assignees of it

80. Yell did not contend that anything Chief Judge Archer set out there was wrong. Thepoint of course is that Chief Judge Archer was talking about the USA.

81. Mr Giboin submitted that this showed that the logo was designed by AT&T. I do nothave to resolve whether the logo itself came from the GPO in the UK or AT&T in theUSA or some other national telephone organisation.

82. Mr Giboin submitted that this showed that the walking fingers logo and Yellow Pageswere generic and owned by nobody. That statement is too broad. No doubt the logoand the term Yellow Pages are indeed generic in the USA. There is an Americanorganisation called the Yellow Pages Association which appears to be open to

anyone. Mr Giboin was anxious to establish that Yell or a company in the samegroup was a member of the Yellow Pages Association. In my judgment it does notmatter whether they are or not since the Association is clearly focussed on the USA,in which the term Yellow Pages and the logo are both generic. Just because a term isgeneric in one territory does not mean that by definition it is generic in another. Thequestion is always a matter of fact in any given territory.

83. As Chief Judge Archer noted in theBellSouth case itself:

A descriptive term may be generic for a designation ab initio,see In re Northland Aluminum Products, Inc., 777 F.2d 1556,

1558-59, 227 USPQ 961, 962-63 (Fed. Cir. 1985), or it may become generic over time through common usage if theotherwise nondescriptive term is not policed as a trademark andit is commonly used to describe a type of product, see MurphyDoor Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 100,10 USPQ2d 1748, 1752 (2d Cir. 1989). In this case, the boardfound the Walking Fingers logo to be in the latter category, atleast in the nonterritory. While the Walking Fingers logo mayonce have been a strong candidate for trademark protection,through common usage by virtually all classified directory

publishers it can no longer be understood to represent a source

of the directories. Instead, as the board determined based on theevidence in support of the summary judgment motion, the logo


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at least in the nonterritory now identifies the product--classifiedtelephone directories-- generally.

84. By nonterritory Chief Judge Archer meant the large part of the USA outsideBellSouths nine states. Chief Judge Archer continued:

This case is somewhat unusual because of the uniquecircumstances surrounding the phone giant AT& T and itssubsequent divestiture of operating companies. Opposers,however, clearly demonstrated that AT& T did not protect thelogo prior to divestiture but rather allowed all other publishersto use the logo. AT& Ts policy regarding the logo resulted innear universal use of the logo prior to and at the time BellSouthacquired separate rights to portions of AT& Ts business andassets in the divestiture and sought to register the WalkingFingers logo as a trademark. The opposers evidence shows

that at this time the use by other publishers was widespread andfrequently in overlapping territories. From the totality of thisuncontested evidence it is clear that the board properlyconcluded that the Walking Fingers logo was in the publicdomain for the identified designation at the time of BellSouthsapplication. BellSouth therefore cannot claim succession to anytrademark use by its predecessor company, AT& T

85. So while the Walking Fingers logo may once have been a strong candidate for trademark protection in the USA, as a result of the particular circumstances pertaining inthat country, it ceased to be capable of representing a source of the directories but

became an identifier of the product generally. The fact that that happened in the USAdoes not mean that it happened in the UK either then or now.

86. Equally there is no reason to doubt the evidence of James Spong and Duncan Gardenthat directories branded Yellow Pages and using a walking fingers logo are availablein Australia and Azerbaijan respectively. Whether the words and logo are distinctivein those territories is not a question I have to resolve.

87. Finally it is also clear that when a person in the United Kingdom accesses the internetit is possible for them to see websites which use the term yellow pages and awalking fingers logo which have nothing to do with Yell. The words Yellow Pages

can appear as part of a domain name and/or as words appearing on the computerscreen. Examples include www.yellowpages.com which Mr Giboin states belongs toAT&T and www.yellowpages.com.au which Mr Giboin states belongs to Telstra theAustralian telephone company. Again Yell did not dispute this.

88. However Mr Giboin made no attempt to show that any of the various websitesaccessible to persons in the United Kingdom which involve the words YellowPages or the logo, and which are not related to Yell, are directed to consumers in theUK or offer services of any kind to UK based customers. I was shown no example ofa directory service on the internet branded Yellow Pages which was a directory of UK

business or which included a substantial number of UK business such that it might be

of interest to UK consumers. Nor was I shown any evidence of any services provided


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by a website branded Yellow Pages (or using the logo) which were directed tocustomers in the UK.

89. Of course it can be said that an individual in the UK might want to use an AmericanYellow Pages internet directory to find an American business for some reason but

there is no evidence about this at all. There is certainly no evidence that such activityoccurs to any significant extent nor any evidence as to what impact it has.

Conclusion from the point of view of the UK public

90. There is no evidence before me of substantial public awareness of the usageelsewhere in the world of the terms Yellow Pages and the logo. In my judgment it is

perfectly obvious that many people will have encountered that usage via the internetand websites like www.yellowpages.com, however there is no evidence those sitesoffer a service directed at the UK and in my judgment there is no reason to think thatthe distinctiveness of Yellow Pages or the walking finger logo in the public mind here

has been eroded in any way.

91. Yellow Pages and the walking fingers logo are well known brands in the UK. Theyare undoubtedly associated with a paper directory service. In my judgment the publicin the United Kingdom associate the words Yellow Pages and the walking fingerslogo with a UK directory service however it is delivered. In other words thatassociation exists whether they encounter the directory on paper, by telephone or onthe internet. The public associates the words and the logo with the claimants

business.

The Zagg.eu and transport-yellow-pages.com websites

92. The origin of the zagg.eu and transport-yellow-pages.com websites is explained byAndrew Smith. He became involved with Mr Giboin as a result of a project todevelop a website called Hauliers UK Network. Mr Giboin was the architect and

prime mover behind that project and indeed Mr Giboin used HUN as a name forhimself on an IT project development website called Elance. The Hauliers UK

Network site was a freight exchange system in which road haulage companies couldfind each other and exchange freight. Thus a company running a load from London toAberdeen could find that there was another company with a need to pick up goods inAberdeen and run them to London. The two jobs naturally interlock and the freightexchange system was a way of facilitating the linking up of these companies.

93. The Hauliers UK Network had a problem and the project was stopped. Mr Giboinwent to India to start work on what we now know as zagg.eu.

94. Zagg.eu and transport-yellow-pages.com are websites directed to the road haulageindustry. Although there are two domain names it is clear that behind them is a singlesystem and in particular a single database. Mr Giboin referred to the front end i.e.the websites as they appear to the public on the internet, and the back end i.e. thesoftware which does the work behind the scenes. As I understood the evidence thereis really only a single back end system in this case. I will call the totality of the twowebsites and the software and database(s) behind them the Zagg system.


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95. At the heart of the Zagg system is a database. The Zagg system then offers variousfunctions to users based on that database. The functions include a directory oftransport companies and other things. There is a freight exchange system like theHauliers UK Network system, there are classified advertisements whereby users canoffer goods for sale such as trucks and spare parts and there are other functions

available. They can buy and sell goods such as trucks and breakdown services. MrGiboin said that his system was about 15 times bigger than Yell. By that he meantthat we had 15 applications against their one, in other words his system offers 15functions or applications (including a directory service) whereas Yell offer only one a directory service.

96. The directory service in the Zagg system allows users to search for transportcompanies. The search can be performed using a map which appears as part of thesite. Transport companies can have a simple listing in the directory or they can buymore sophisticated advertisements which will appear in the system and be presentedto users. Another service offered apparently allows transport companies to build their

own websites using templates provided by the system which will link into it.

97. Mr Giboin described the Zagg system as an e-market place and as a portal. He wasreferring to the fact that the system allows users to access the various functions I havementioned. Although Mr Giboin never put it this way, it appears that within theoverall Zagg system, the name transport-yellow-pages is usually used to refer to thetransport directory service whereas zagg and the zagg.eu front end usually seems torefer to the whole system.

98. Mr Giboin explained that the Zagg system is meant to be global in nature so that it isaccessible from anywhere and has entries from all kinds of countries.

Development of the Zagg system

99. Mr Giboin is the architect of the Zagg system. He described himself as such. Whatthis means can be seen from material in evidence from a website called Elance.Elance allows a system architect to post requests for development work to be carriedout with a price. The requests are visible to programmers anywhere in the world.Programmers can undertake to do the work and assuming it is satisfactory they will be

paid. The payments operate via the well known Paypal system which is an internetbased payment system.

100. For example on 26 March 2006 Mr Giboin posted on Elance a request for anexperienced PHP My SQL programmer and database manager to take over a projectto complete some modules. PHP refers to a computer programming language. The

budget was stated to be between $1,000 and $5,000. He received 14 bids fromprogrammers all over the world including India, Romania and the Ukraine.

101. It is clear from the Elance documents (and Mr Giboin confirmed) that the entries inthe database of the Zagg system were created by scraping. Scraping is a term fortrawling the internet for information and then putting it together on your own website.The Elance documents show that Yells own website was a source of at least oneentry in the defendants database. It is not clear whether more were taken. One

example is that Mr Giboin wanted 10,000 sets of banner adverts for which he wouldpay $1.00 per set. The computer workers who were to carry out this task were to be


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given addresses of websites to go to, get the companys logo and any slogans andmake sure the banner advert reflected the companys website. However the claim

before me is not based on copyright or database right.

102. Mr Giboin suggested that the overall development costs were 5 Million. There is no

evidence beyond Mr Giboins statement as to that but in any case the system hasclearly costs substantial sums of money to produce and represents the work of many

people. However Mr Giboin is and was at the core of it all. He says he did not doany programming work himself and I do not doubt it. Mr Giboin clearly organisedthe whole project whereby the Zagg system has been created and developed. His skillis as a project manager. He clearly exercises personal control and authority over thewhole thing. So for example at various stages in these proceedings Mr Giboin hasoffered to change aspects of the websites. In making those offers it is plain that MrGiboin was the person with the power and authority to make those changes.

The Zagg system today

103. Mr Giboin showed the court a part of the system consisting of classifiedadvertisements for vehicles for sale. He explained that these had been scraped fromelsewhere and that the companies concerned did not know these vehicles were presentin this way. They were 18 months out of date. At one stage Mr Giboin suggested thatnone of the site was live and it was all still under development. That is not consistentwith Mr Smiths evidence, who stated that he had carried out work which he pickedup through a system which is part of zagg.eu called Buy a Website. It is notnecessary to resolve the question of whether every function and application in thesystem is up and running or whether part or all of it is not yet live. There is notenough evidence before me to do that. I rather think in the light of Mr Giboins clear

statement, that much of the system may well not be live yet.

104. As it stands the system can provide a directory consisting of nearly 2000 UnitedKingdom based transport businesses. The websites claim that there are 90,000companies listed. There is no evidence whether this is right or wrong but it is clearthat the system contains many details relating to non-UK based businesses too.

105. I will deal with the appearance of the websites below since it is the manner in whichthey present themselves to the public which is in issue in this case. Yell made it

perfectly clear that they have no inherent objection to the system provided it does notinfringe their rights.

Issues

106. The issues I have to decide are:-

xii) Do the websites infringe?

xiii) Are the websites passing off?

xiv) Are the websites directed to the UK?

xv) Who is operating / controlling websites and are any of the defendantsliable?


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107. It is convenient to pose the question do the websites infringe? although of courseonly a person can do that (s10 of the 1994 Act A person infringes a registered trademark if ). Nevertheless someone is behind the websites one way or the other and Iwill deal with the liability of persons as issue (iv).

108. One point ought to be addressed now to be disposed of. There is no challenge to thevalidity of the registered trade marks. A minor dispute arose when Yell submittedthat there was no counterclaim by the defendants. The point being made was thatthere was no challenge to validity. Mr Giboin objected to the contention that he hadno counterclaims and it is correct that first Defence Statement does contain a sectionin which Mr Giboin makes various claims which are in effect counterclaims. Thecounterclaims are:

xvi) that Yell should stop showing its Internet Yellow Pages (IYP) onother websites;

xvii) that the domain name dispute about www.transport-yellow-pages.comshould be referred to ICANN;

xviii) that Yell should drop its reference to internet pages from its claim fortrade mark infringement unless Yell changes the name of its websitefrom Yell.com to www.yellowpages-co.uk and actually uses the wordsyellow pages on its website;

xix) that Yell should drop its passing off claim unless they withdraw fromthe Yellow Pages Association and create a new logo which does notresemble the current walking fingers logo Yell use

xx) Yell should re-register their trade mark Yell as the IYP and notYellow Pages and exclude the use of Yellow Pages as being part of theYell trade mark.

109. None of these consists of a challenge to the validity of the two registered trade marksrelied on by Yell. A charitable interpretation of item (v) above might suggest that itcontains something akin to a challenge to validity but in my judgment it does not.

i) Do the websites infringe?

110. In order to deal with this I need to identify what services are available via thewebsites. This is not an easy task because a good number of services are offered viatransport-yellow-pages.com and zagg.eu. Mr Giboin did not suggest that there wasany substantive difference in the services available via each domain name. I find as afact that all of the services available are offered via both domains.

Business directory service and a database relating to transport services and transportcompanies

111. Yells pleaded case is that the defendants offer a business directory service and adatabase relating to transport services and transport companies. Mr Giboin did notdisagree. I find as a fact that this element of the claimants case is proved in relationto both sites. Whoever is responsible is offering (inter alia) a business directoryservice and a database relating to transport services and transport companies to the


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public. However neither side focussed on how those services stand in relation to thetwo trade mark registrations in issue.

112. Although Yell pleaded an identical mark/identical services cases in relation to the391 registered trade mark, it is clear that the pleaded services are not identical to any

within the specification of the 391 trade mark.

113. Yell did not urge a case based on having to consider whether an internet directoryservice was similar to services covered by the 391 trade mark such as distribution of

printed advertising matter and promotional material by post and I will not address it.

114. As for the 121 trade mark, the specification is very broad and impenetrable (Annex2). Yell did not draw my attention to any particular aspect of the 121 specificationwhich bears on the pleaded case. In class 35 the 121 mark includes compilation ofbusiness directories, market analysis and research but it seems to me that thatservice is one in whch the business directory is compiled for a customer. It is not (in

my judgment) talking about offering a directory to the public. The specification alsoincludes business information, advertising and promotional services provided on-line from a computer database or by means of web pages on the Internet in class 35and this seems to me to be nearer the mark in referring to business information

provided online etc.. In my judgment the pleaded services are identical to thatlatter definition. In class 39 the specification also includes Information servicesrelating to travel, transport and packaging and storage of goods and provision ofinformation relating to travel and transport. I hold that the pleaded services are alsoidentical to these.

Advertising services

115. In addition to their pleaded case Yell emphasised that the Zagg system offers otherservices. Mr Giboin did not object to this. The trial itself was the first time someaspects of the Zagg system became clear.

116. Mr Giboin explained that his system offers a service whereby users can buy enhancedforms of advertisement and are offered templates for the adverts. In my judgment thatmeans the sites supply advertising and publicity services within the specification ofthe 391 registered trade mark and also marketing, promotional and advertisingservices within the 121 mark. The core of each definition seems to me to focus on aservice whereby the client is helped in order to produce advertising or promotional

material. I doubt, but do not have to decide, whether merely offering advertisingspace for sale amounts to the core of either definition but when that offer is combinedwith templates in order for the particular advertisement to be created as a result of acollaboration between the Zagg system and the advertiser, then it seems to me thatthose services are on offer.

Conclusion on services the questions arising

117. My conclusion in relation to the services offered by the Zagg system and how theystand in relation to the registered trade marks can be summarised in this table:

Claimants trade marks Services offered by Zagg system


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business directory service

and a database relating totransport services andtransport companies

advertising services

391 (YELLOW PAGES) Not similar Identical

121 (Walking fingers logo) Identical Identical

118. The two sites differ somewhat in their appearance and I will address them separately.

(a) transport-yellow-pages.com

119. Mr Manwaring exhibited pages from the transport-yellow-pages.com site in the formsit took over various dates in October 2009 and November and December 2010. It isconvenient to consider the appearance of the page exhibited as the first page in MrManwarings exhibit PWM 61. As printed the page shows a number of features:

xxi) The words Transport Yellow Pages - Global directory, get listed freerun along the top.

xxii) On the top left side there is a black silhouette of a truck with yellowwalking fingers shown and the word Transport in the yellow colour.Beside this are the words Yellow Pages (with Yellow above Pages).There is a small symbol beside them. A scaned version of this trucklogo is at Annex 3.

xxiii) There are 5 small advertisements for transport businesses around theleft hand and lower edge.

xxiv) In the centre of the page in a prominent position the site reads 90,000companies listed in Transport Yellow Pages. (90,000 is in much larger

type than the words).

xxv) On the right is a map obscured with an advertisement for anothertransport business.

xxvi) Under a box with the words Are you listed is written TransportYellow Pages.

120. It is clear that the website uses the sign Transport Yellow Pages and a walkingfingers logo (in a truck motif) in relation to all the services available includingoffering a business directory service and a database relating to transport services and

transport companies and offering advertising services. The sign Transport YellowPages is used both as words appearing on the web pages and by the domain name


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transport-yellow-pages.com, which in my judgment consumers would also regard as asign used in relation to the services.

Trade Mark 391 (YELLOW PAGES) - Infringement under Art 5(1)(a)/s10(1)

121. Is the sign Transport Yellow Pages identical to yellow pages? The extra wordtransport adds very little indeed by way of distinctiveness given that the services onoffer relate to transport. However the addition of descriptive wording to Reedcreate Reed Business Information meant it was not identical (Reed v Reed(above)).

122. The test in LTJ Diffusion (above) is whether the sign reproduces, without anymodification or addition, all the elements constituting the trade mark or where,viewed as a whole, it contains differences so insignificant that they may go unnoticed

by an average consumer.

123. In my judgment the addition of transport would not go unnoticed by the average

consumer and the mark is not identical to the 391 registration for yellow pages.There is no infringement under Art 5(1)(a)/s10(1).

Trade Mark 391 (YELLOW PAGES) - Infringement under Art 5(1)(b) / s10(2)

124. Does the use of Transport Yellow Pages in relation to advertising services infringe?Looking at the matter globally the following factors are important:

xxvii) The advertising services are identical to the services registered.

xxviii) The sign only differs from the registered mark by the additionaldescriptive word transport which has a clear reference to the natureof the services on offer.

xxix) Yellow Pages is the dominant element in the sign and that is identicalto the registered trade mark.

xxx) Conceptually the sign is more or less identical to the mark.

xxxi) The relevant consumer of advertising services must be a businesswishing to avail itself of these services. Assuming the site is directed tothe UK (see below), Yellow Pages is a well known mark to UK

businesses looking to advertise themselves.

xxxii) Mr Giboin says that Transport Yellow Pages just means transportdirectory. In effect Mr Giboin was raising a possible defence under Art6 of the Trade Marks Directive. However on the facts, while MrGiboin may be right as far as consumers in the USA are concerned, inmy judgment he is not right in the UK. Yellow Pages is distinctivehere. It is recognised in the UK as a trade mark, it is not a description.

xxxiii) In my judgment UK businesses encountering the site would be likely tothink that the site was linked with the familiar Yellow Pagesdirectories. They would think it was a site from the same stable.


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125. Taking these factors into account, assuming the site is directed to the UK (see below)then the use of the sign transport yellow pages is infringing under Art 5(1)(b) /s10(2).

Trade Mark 391 (YELLOW PAGES) - Infringement under Art 5(2) /s10(3)

126. The website offers a business directory service and a database relating to transportservices and transport companies which I have decided is not similar to theservices covered by trade mark 391. However that does not bar a claim toinfringement under Art 5(2). The 391 mark YELLOW PAGES clearly has areputation of the kind necessary to satisfy Art 5(2) of the Directive.

127. Transport Yellow Pages clearly gives rise to a link or association with theclaimants mark YELLOW PAGES in the mind of the average consumer irrespectiveof the difference between the services registered and the services provided by thewebsite. Yellow Pages is the dominant part of Transport Yellow Pages and that

dominant part is Yells mark. That use takes an unfair advantage of the distinctivecharacter of Yells mark because it misappropriates the cachet attached to it in themind of UK consumers. YELLOW PAGES is recognised as the mark of a respectedsource of directory information in the UK. I do not need to go on and considerwhether this use is detrimental to the distinctive character of the mark.

128. In a striking comment in his opening submissions Mr Giboin said the following:

Okay, when you stand in front of investors and you go in witha name called Zagg, who are you, you know, if you go in with a

brand, say Transport Yellow Pages with a walking fingers

logos, you get the attention. Okay? But its not illegal.Because on the internet, worldwide, unlike Coca Cola, nobodyowns that nobody owns it. Its as simple as that.

129. This is clearly an explanation of why he had chosen to use transport yellow pages andthe walking fingers logo. Mr Giboin knows that his mark Zagg has no recognitionamong investors. Their reaction to Zagg would be who are you?. Hence he usesYells brands in order to get attention. That is taking unfair advantage of thedistinctive character of Yells marks. Of course Mr Giboin clearly believes that whathe is doing is not illegal but that is not the issue.

130. If I am wrong about infringement under Art 5(1)(b) in relation to advertising servicesthen in my judgment there is still infringement under Art 5(2) in that respect for thesame reasons as I have set out in the previous two paragraphs.

Trade Mark 121 (Walking fingers logo)

131. No issue under Art 5(1)(a) arises in relation to this mark. I will consider Art 5(1)(b)/s10(2) and deal first with the truck logo and second with the phrase transportyellow pages absent the logo.

132. For the truck logo (Annex 3), looking at the matter globally the following factors are

important:


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135. Assuming the site is directed to the UK (see below) then it is infringing under Art 5(1)(b) / s10(2).

Trade Mark 121 (Walking fingers logo) infringement under Art 5(2) / s10(3)

136. The 391 mark has a reputation to satisfy Art 5(2). Use of either the truck logo ortransport yellow pages would infringe because the average consumer wouldassociate or link those signs with the registered trade mark. The use would be unfairfor the same reason as given above for mark 391. There is infringement under Art5(2).

(b) Does use of the signs on zagg.eu infringe?

137. Mr Manwaring exhibited pages from the zagg.eu website as shown on various datesfrom October 2009 to December 2010. The layout of the page is the same as the pageI considered above for transport-yellow-pages.com. Using the same list features set

out above in paragraph 119, the similarities and differences are:

xlv) Same as transport-yellow-pages.com.

xlvi) The truck logo (Annex 3) in transport-yellow-pages.com has beenreplaced by a grey/blue logo consisting essentially of the word Zagg ontop of three grey/blue chevrons.

xlvii) Same as transport-yellow-pages.com.

xlviii) Same as transport-yellow-pages.com.

xlix) Same as transport-yellow-pages.com.

l) Same as transport-yellow-pages.com.

138. The words Transport Yellow Pages appear as a prominent title on the page herewhereas on transport-yellow-pages.com the title is Road Transport Portal.

139. The page has a tiny yellow truck on the right near the top (the same truck appears ontransport-yellow-pages.com). Mr Giboin referred to this truck although it is not clearwhy. The truck is not the same as the truck logo in Annex 3.

140. The truck logo in Annex 3 does appear on at least one page in the zagg.eu site(Exhibit PWM-60 p236). It is on a page under the heading Transport Yellow Pages

Global directory, get listed for free and above the words Increase your PresenceFor as little as 100 See how banner adverts drive customers to your website.This page appears to allow potential customers to obtain a listing for their business inthe Transport Yellow Pages directory available through zagg.eu and to buy anenhanced advert in the site.

141. The site also allows users to obtain tooltip advertising (Exhibit PWM-60 p238).Tooltip adverts are linked to the map in the Zagg system. As I understand it, if a userlooks for businesses in a certain area, the map will be shown with tooltip adverts for

businesses in that area being linked to their respective locations. The feature is said tobe free although an extended service is also possible presumably for a charge.


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142. In summary, like the transport-yellow-pages.com website, the zagg.eu site uses thesign Transport Yellow Pages and a walking fingers logo (in a truck motif) inrelation to all the services available including offering a business directory service anda database relating to transport services and transport companies and offeringadvertising services. The difference is that each page has the grey/blue Zagg chevron

logo on the top left instead of the truck logo.

143. In my judgment the presence of the grey/blue Zagg chevron logo makes no differenceto any of the issues of trade mark infringement I have addressed above for thetransport-yellow-pages.com website and the same conclusions follow. The zagg.eusite (if directed to the UK) infringes both trade marks.

ii) Passing off

144. In this case there are significant differences between passing off and trade markinfringement. They are:-

li) While the 391 mark for the words yellow pages has a relativelylimited specification of services, Yells case in passing off is that itsgoodwill and reputation in the UK associated with that mark is more

broadly based.

lii) While the 121 mark relates to two particular forms of the walkingfingers logo, in practice Yell has used other versions of this logo aswell and they are relevant to a passing off claim.

liii) In passing off one has to consider both parties trading as it is. Thus the

impact of the use of the mark Zagg on the websites, particularlyzagg.eu, falls to be considered and also the absence of the claimantsmark Yell.

liv) Absence of real-life confusion has more relevance to a passing offclaim than in the case of trade mark infringement

UK-Yell Limited v Louis Giboin & 2 Ors

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Transcript of UK-Yell Limited v Louis Giboin & 2 Ors