Keenan and Riches’BUSINESS LAW

Chapter 15Business property

Internet domain names

The Trade Mark Registry has issued guidelines on the
treatment of Internet domain names. Signs including
http://, http://www., .co, .gov, .orgdo not have any distinctive
character as trade marks for goods and services sold via
the Internet. Instead, trade mark examiners and hearing
officers will look at the rest of the domain name. If it
has a distinctive element, it will be considered for accept-
ance as a trade mark in the electronic information
services class or in the software class.
Domain names containing the words ‘web’ and ‘net’
tacked on to descriptive or non-distinctive words will
probably not be registrable as they are considered generic
terms for discussing the Internet.

Injurious falsehood

In our present context a person is liable for injurious (or
malicious) falsehood if he makes a statement about the
goods of another which is malicious and is intended to

cause and does cause damage to the business of the other

person.

Injurious falsehood is an aspect of defamation and

where the false statement is made about another’s goods

it is sometimes called ‘slander of goods’.

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Barclays Bank plcv RBS Advanta(1996)

RBS wished to promote its new credit card. It published

a leaflet listing 15 ways in which its card was superior to

others and in a brochure it included a comparative table

listing six other credit cards including Barclaycard and

Standard Visa, setting out their annual fees, annualised

rates of interest on purchases and on cash advances,

and their monthly interest rates. Barclays Bank, the owner

of Barclaycard, claimed that in setting down details RBS

had not been comparing like with like and had implied

that its own card was superior on all 15 points. The bank

asked for an injunction to prevent RBS from referring to

its mark (Barclaycard) in literature promoting the RBS card.

Section 10(6) of the 1994 Act was at the root of the

case. It provides as follows: ‘Nothing in the preceding

provisions of this section shall be construed as prevent-

ing the use of a registered trade mark by any person for

the purpose of identifying goods or services as those of

the proprietor or a licensee. But any such use otherwise

than in accordance with honest practices in industrial

or commercial matters shall be treated as infringing the

registered trade mark if the use without due cause takes

unfair advantage of, or is detrimental to, the distinctive

nature or repute of the trade mark.’ The court decided

that the literature conveyed the honest belief of RBS that

its card, taken as a whole, offered customers a better deal,

and refused the application by Barclays for an injunction.

De Beers Abrasive Products Ltdv

International General Electric Company

of New York Ltd (1975)

De Beers made a diamond abrasive known as and mar-

keted under the trade mark ‘Debdust’. It was used for

cutting concrete. International made and marketed a

competing product under the trade name ‘MBS-70’.

International stated in a trade pamphlet that laborat-

ory experiments had shown that MBS-70 was superior

to Debdust. De Beers alleged that the contents of the

pamphlet were false and misleading. The court said that

the pamphlet would amount to an actionable slander of

goods if De Beers could prove the allegations and show

malice on the part of International.

Passing-off

Any person, company or other organisation which car-

ries on or proposes to carry on business under a name

calculated to deceive the public by confusion with the

name of an existing concern, commits the civil wrong

of passing-off and will be restrained by injunction from

doing so. Other examples more important in our con-

text of passing-off are the use of similar wrappings, iden-

tification marks, and descriptions. Thus, in Bollinger v

Costa Brava Wine Co Ltd(1959) the champagne pro-

ducers of France objected to the use of the name ‘Spanish

Champagne’ to describe a sparkling wine which was

made in Spain and they were granted an injunction to

prevent the use of that term. The remedies other than an

injunction are an action for damages or for an account

of profits made from wrongful use of the wrapping,

mark or description.

The use of the passing-off rules in the context of

branded products is illustrated by the following case.

United Biscuits (UK) Ltdv Asda Stores

Ltd (1997)

This case concerned two chocolate sandwich biscuits:

Penguin, which is the brand leader owned by United

Biscuits, and Puffin, a biscuit manufactured by Asda and

retailed at a price 25 per cent lower than Penguin. The