800 Flowers, Trade Mark Application, 1-800 Flowers Inc v Phonenames Ltd

[2001] EWCA Civ 721, [2002] FSR 191, [2001] 28 LS Gaz R 42, (2001) Times, 9 July, [2001] All ER (D) 218 (May), [2001] IP & T 839

Court: CA

Judgment Date: 17/05/2001

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TRADE MARKS, TRADE NAMES AND DESIGNS - OPPOSITION TO REGISTRATION - CONFUSION - ALPHA-NUMERIC FREEPHONE NUMBER - WHETHER MARK CAPABLE OF DISTINGUISHING HAVING REGARD TO ITS INHERENT NATURE - TRADE MARKS ACT 1938, SS 10, 11, 17 AND 68.

The dispute before the court concerned the telephone number 0800 356 9377 which corresponded to the alpha-numeric freephone number 0800 Flowers and had an obvious potential for a business of selling flowers over the telephone. The opponent, Phonenames Ltd, obtained the use of that number in late 1993. On 13 February 1993, however, the applicant, 1-800 Flowers Inc, a company incorporated in the United States of America, had applied to register 800-Flowers as a service mark in Part B of the register, the use of 800 and Flowers, when used separately, being disclaimed. The specification of services was for receiving and transfer of orders for flowers and floral products. The principal hearing officer rejected the opposition to registration of the mark. The opponent appealed. The judge held (i) that in the future the mark would very likely be taken to be a phone number for ordering flowers with a clear descriptive meaning, irrespective of any use by the mark owner, and (ii) that confusion was inevitable as soon as the public was educated about the use of alpha-numeric freephone numbers and the mark was also put into use. Accordingly the judge allowed the opponent's appeal on the grounds that registration would be contrary to s 10 of the Trade marks Act 1938 because the mark had no inherent capacity to distinguish the applicant's services, and would be contrary to s 11 of the Act. Further the judge held that the applicant's intention to use the mark in the United Kingdom was conditional upon it obtaining the use of the alpha-numeric phone number, and that accordingly it had not had the requisite intention to use the mark in the United Kingdom for the purposes of ss 17 and 68 of the Act, and moreover that it had not established actual use of the mark in the United Kingdom. The judge ordered the applicant to pay the opponent's costs, which amounted to in excess of £30,000. He summarily assessed the costs in the sum of £10,000, taking a view that that was an appropriate amount for a one-day case in the High Court. The applicant appealed. The opponent cross-appealed against the judge's costs order.Held The appeal would be dismissed. The cross-appeal would be allowed.
(1) The inherent distinctiveness of the mark in 1993 had to be judged against the background of the increasingly widespread use of alpha-numeric phone numbers in the United Kingdom. The plain inference from the evidence was that the applicant had adopted the mark in 1993 because of its telephonic significance, and because of the existence of the opportunity for commercial exploitation of the corresponding freephone number. In such circumstances, the mark was no more than an encoded telephone number and had not the inherent capacity to distinguish for the purposes of s 10 of the 1938 Act. It inevitably followed that since the applicant had never had the encoded telephone number, its use of the mark in the United Kingdom would cause confusion, contrary to the provisions of s 11 of the 1938 Act.
(2) On the facts of the instant case, the judge had been correct to uphold the ground of opposition under ss 17 and 68 of the Act. The evidence, which included telephone calls from the United Kingdom to the applicant's US telephone number and accessing of the applicant's internet website, had been insufficient to establish even minimal actual user of the mark by the applicant in the United Kingdom. Moreover the applicant's intention to use the mark in the United Kingdom was plainly conditional on its acquiring the corresponding telephone number in the United Kingdom.
(3) It was the essence of a summary assessment of costs that the court should focus on the detailed breakdown of costs actually incurred by the party and carry out the assessment by reference to the items appearing in the statement of costs. The jurisdiction to summarily assess costs was not to be used as a vehicle for the introduction of a scale of judicial tariffs for different categories of case. On the facts of the instant case, the judge had fallen into error by not focusing at all on the detailed items in the opponent's statement of costs; rather he had applied his own tariff.