The advantage of registration as a trade mark where
possible has already been considered, as has the protec-
tion of Internet domain names (see Pitman Training
Ltd vNominet UK(1997)).
The High Court has also ruled that the fact that a
company may find it harder to achieve brand recog-
nition when another company is actively promoting a
similar brand is not enough in itself to allow the
aggrieved company to claim an injunction, particularly
if there is no serious confusion. Thus, in HFC Bank plc
vMidland Bank plc(2000) Midland Bank rebranded its
business and associated businesses as HSBC. HFC Bank
tried for an injunction to restrain the use of the HSBC
brand name and failed. The High Court judge did not
feel there was a serious likelihood of confusion and felt
that the matter could in any case be solved by proper
marketing. Interestingly, therefore, the judge was putting
forward a commercial rather than a legal solution.
However, the High Court held in Pfizer Ltd v
Eurofood Link (UK) Ltd(1999) that giving the name
‘Viagrene’ to a beverage that was to be marketed as an
aphrodisiac was a passing-off of the name ‘Viagra’, the
anti-impotence drug, as well as an infringement of UK
and Community trade marks.
Confidentiality: employment
Certain activities by employees are regarded by the law
as breaches of the duty of faithful service which an
employee owes to his employer. Breaches of this duty of
fidelity will sometimes be prevented by the court, so that
a person who retains secret processes in his memory can
be restrained from using them to his employer’s disad-
vantage without any contract in restraint of trade.
An employer who copies names and addresses of his
employer’s customers for use after leaving his employ-
ment can be restrained from using the lists without any
express restrictions in his contract.Part 4Business resources
442
High Court ruled that Puffin’s packaging and get-up was
in a material sense deceptively similar to that of Penguin,
so that Asda was guilty of passing-off its own cheaper
brand as though it was connected with the Penguin brand.
The court drew attention, in particular, to the names of
the two products and to the seabird pictured on them
both. The court granted United Biscuits an injunction
preventing further sales of Puffin, but suspended the
operation of the injunction for 35 days to allow Asda,
among other things, to dispose of five weeks’ stock
of biscuits by selling them. However, the case failed on
the use of the word ‘Penguin’. Evidence showed that,
as regards the two names, ‘Penguin’ and ‘Puffin’ taken
alone did not cause significant confusion to consumers.
Asda could therefore continue to use the ‘Puffin’ brand
name.Robbv Green (1895)The claimant was a dealer in live game and eggs. The
major part of his business consisted of procuring the
eggs and the hatching, rearing and sale of gamebirds.
His customers were numerous and for the most part
were country gentlemen and their gamekeepers. The
claimant kept a list of these customers in his order book.
The defendant, who was for three years the claimant’s
manager, copied these names and addresses, and after
leaving the claimant’s employment set up in a similar
business on his own and sent circulars, both to the
claimant’s customers and to their gamekeepers, inviting
them to do business with him. The claimant asked for
damages and an injunction and the Court of Appeal
decided that, although there was no express term in the
defendant’s contract to restrain him from such activities,
it was an implied term of the contract of service that
the defendant would observe good faith towards his
employer during the existence of the confidential rela-
tionship between them. The defendant’s conduct was a
breach of that duty of good faith in respect of which his
employer was entitled to damages and an injunction.
Comment.In connection with the duty of fidelity, it
should be noted that it does not matter who initiates
the infidelity; although in most cases the employee
approaches the customer, the rule still applies even where
the customers approach the employee.Although cases such as Robbcan still be relied upon
on their own facts, where the employer relies on the
implied term of good faith to protect trade secrets or
business connections that have simply been learned as
part of doing the job, the implied-term theory is much
less secure, and today a commercial lawyer would recom-
mend an express contractual term setting out clearly
what it is intended to protect. The complexity of some
modern products is such that the court needs guidelines
through the contractual term as to what is to be pro-
tected. Thus, in Pocton Industries Ltdv Michael Ikem
Horton(2000) the Court of Appeal ruled that, although
an electro-plating apparatus was a trade secret, it was