A recent High Court case has been decided on the basis of an interesting method of providing evidence of likelihood of confusion in an online trade mark infringement and domain name dispute. Through the use of Google AdWords, amongst other evidence, an online retailer of women’s fashion clothes and accessories trading as “boohoo.com” was successful in obtaining an interim injunction to prevent a competitor from trading under the trade mark or domain name “Miss Boo”.
The claimant’s boohoo.com website is a fashion website targeting young women aged between 17 and 25 and has been successful from launch, enjoying a notable reputation as an online fashion retailer. The claimant owns Community Trade Marks (CTMs) for the words BOOHOO, BOOHOO.COM and BOO, as well as a variety of generic and country code top level domain names comprising the words “boohoo” and “missboohoo”, which were used to redirect customers to the www.boohoo.com website.
The defendant, Miss Boo Limited, launched an online retail business in September 2009 trading under the name “Miss Boo” and “missboo.co.uk” through its website www.missboo.co.uk. The defendant targeted the same customer base as the claimant, within the same geographical area and advertised in the same magazines, selling a similar style of clothing. When it discovered the defendant’s website, the claimant applied for an interim injunction alleging trade mark infringement and passing off.
The owner of a CTM has the right to prevent unauthorised third parties from using, in the course of trade, any sign where, because of identity or similarity between the marks or goods or services covered by the mark, there exists a likelihood of confusion (including the likelihood of association) on the part of the public between the mark and the CTM.
To demonstrate confusion, the claimant took the step of purchasing the words “Miss Boo” as Google AdWords, so that when an internet user entered the words “Miss Boo” into a search engine, the claimant’s advertisement for www.boohoo.com appeared in the sponsored search results. The claimant had discovered that almost 15% of the source of traffic to its “boohoo.com” website had come from the link which appeared in the sponsored search results, after the internet user had searched against the words “Miss Boo”. The Court emphasised that words were particularly important in the context of online shopping, because it was these words which led the consumer to the shop. In this case, a consumer might be led to believe that “Miss Boo” was connected with the claimant, but aimed at a slightly different market. A consumer was likely to associate “Miss Boo” with “Boo”. An interim injunction was justified on the ground that there was a strong likelihood of confusion between the defendant’s mark and the claimant’s registered CTM.
The Court’s acceptance of a relatively simple and inexpensive method of providing evidence to support likelihood of confusion and support a claim for trade mark infringement or passing off opens new possibilities in domain name disputes. The IT and IP Team will be discussing this with clients in appropriate domain name disputes to support or defend trade mark infringement claims.
For more information please contact:
Diane Clayton, Solicitor, direct telephone 023 8048 2299, e-mail diane.clayton@parissmith.co.uk
Emma Foster, Solicitor, direct telephone 023 8048 2111, e-mail emma.foster@parissmith.co.uk