England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		St. Dunstan's House 133-137 Fetter Lane London EC4A 1HD
		04/04/2011

JUDGE BIRSS :

Topic	Para
Introduction	1
The proceedings up to and including trial	10
The 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 and transport 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	196
Annexes
- Annex 1 Registered trade mark '391	Annex 1
- Annex 2 Specification of services for trade mark '121	Annex 2
- Annex 3 The Truck Logo	Annex 3

Introduction

1. This is an action for trade mark infringement and passing off.
2. The claimant Yell is the company behind the well known Yellow Pages directories in the United Kingdom. It also operates an online directory service at yell.com and a telephone directory service. The number for the directory service is 118 24 7. Yell was formerly owned by British Telecommunications Plc and prior to that the Yellow Pages 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 which are associated with Mr Giboin. He is a director of both. The defendants have not instructed lawyers to act for them. Mr Giboin represents himself and has represented the two corporate defendants.
4. Yell owns two United Kingdom registered trade marks:

i) No 1,283,391 for the words "YELLOW PAGES" registered on 16^th 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 of printed 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 fingers walking across the open pages of a book together with the words YELLOW PAGES registered on 6^th 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 which the words Yellow Pages stand beside the walking fingers. An image of the two marks and the full specification of services are set out in annexes 1 and 2 to this judgment.

5. The stylised depiction of walking fingers in registered trade mark No. 2,329,121 is called the "walking fingers" logo. The precise form of the walking fingers logo as Yell has used it has varied over time. All the variants in the papers in this case convey the same idea of fingers walking, often through directory pages. They manifestly hark back to the slogan "Let your fingers do the walking" and convey the same 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 name YELLOW PAGES and the walking fingers logo relating to directory services.
8. Yell contends that the defendants have infringed its registered trade marks and committed 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. Yell contends that these sites are controlled by the defendants and operate a business directory service and a database relating to transport services and transport companies. Yell complains of the name of the latter site itself and the use on both sites of the words YELLOW PAGES and the walking fingers logo. Yell argues that as a result the defendants are committing acts of trade mark infringement and passing off.
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 the walking 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 and conduct transactions abroad. The defendants also argue that on the internet neither YELLOW PAGES nor the walking fingers logo are distinctive because both are used all over the world in relation to directories which have nothing to do with Yell. They submit these marks are generic "on the internet". A particular point the defendants take is that the term "transport-yellow-pages" in transport-yellow-pages.com simply means transport directory.

Proceedings up to and including trial

10. This action began in the High Court. The claim form was issued on 28^th September 2009 and Particulars of Claim served at the same time. The defendants filed a first "Defence Statement" on 19^th October 2009. This document sets out Mr Giboin's case fully. A further shorter "Defence Statement" was filed on 4^th November 2009. The latter but not the former bears a statement of truth signed by Mr Giboin. Replies were filed by the claimant to each defence.
11. On 30^th November 2009 the action was transferred to the Patents County Court by the Order of Master Bowles. A CMC was heard on 9^th July 2010 before His Honour Judge Fysh QC and directions were given for trial. The 9^th 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 14^th May 2010 and struck off the companies register. There was no point in its being a party to the proceedings.
12. On 12^th January 2011 I heard a telephone application by Mr Giboin. The application was for disclosure by the claimant of various documents. Mr Giboin has been working in Qatar and called into the hearing from there. It became clear during the course of the application that the point of Mr Giboin's 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 no use of the domain name yellowpages.co.uk. A further aspect of the application related to Yell's alleged membership of an American organisation called the Yellow Pages Association. Mr Giboin sought to establish that Yell, or a company in its group, was a member of that organisation.
13. The order made on 12^th January included a direction for the evidence to be filed by 24^th January. Yell filed their main witness statements within that period and Mr Giboin had filed some of his material in that timeframe as well. However, both sides also filed further material afterwards, and on Friday 25^th February the claimant made an 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 a new 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 prove necessary to ensure that the proper parties were before the court. The claimant was also understandably concerned that yet more material would emerge between the Friday 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 made rather than seeking to deny his own involvement or pass sole responsibility on to others. It was clear that the case should go ahead with all the material filed by both sides.
15. The trial commenced on 28^th February. Miss Denise McFarland instructed by Olswang represented Yell. Mr Giboin represented himself and has represented the two corporate defendants.
16. On the claimant's side Yell relied on witness statements from Paul Manwaring, Luke Humble 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 provided under a hearsay notice.
17. On the defendants' side there were witness statements from James Spong, Duncan Garden, Glenn Spong, Terence Zhang, Andrew Smith and Alex Spong. There was also an email from Cindi Aldrich of the American Yellow Pages Association. Mr Giboin had indicated that none of these witnesses would be available for cross-examination as they were all resident abroad. Mr Giboin himself provided two witness statements and was available for cross-examination.

Conduct of the trial

18. On the morning of the trial, the court and Yell's solicitors received an email from Mr Giboin indicating that his train ticket was not valid for the train he had expected to catch to arrive at court for 10:30. He stated, "If you want to continue, I am sure Mr Manwaring can give his speech on Yell's advertising budget for an hour or so". He suggested that he could be contacted on Skype, which he could pick up on his laptop on the train. I directed that the trial should commence as planned at 10:30 with Miss McFarland opening the case for Yell. There were various matters for counsel to open for which Mr Giboin did not need to be present, given that there was a transcript of the proceedings which he could read that evening. Certain more substantive matters in the opening were left over to address when Mr Giboin arrived. He arrived at about 12:30 pm. Following counsel's opening I gave Mr Giboin permission to make an opening address as well.
19. Miss McFarland submitted that this was a case which could and should be heard in two days. In my judgment she was entirely right and I gave directions during the trial to facilitate that.
20. Mr Giboin indicated that he wanted to demonstrate various websites on the internet using 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 the demonstration would take no more than half an hour.
21. Mr Giboin indicated that he did not wish to cross-examine Mr Saville (who was available to be cross-examined if required), but he did wish to cross-examine Mr Manwaring. Mr Giboin estimated he would need 5 minutes to cross-examine Mr Manwaring. I directed that the cross-examination would take no more than half an hour.
22. Yell indicated that they did not wish to cross-examine Mr Giboin. In the course of his submissions as a litigant in person Mr Giboin made various statements many of which were not within his witness statements. Yell did not object and indeed Yell relies on some of Mr Giboin's statements as admissions of various matters.
23. Once the cross-examination of the sole witness giving oral testimony (Mr Manwaring) was complete, Mr Giboin made his closing address. I directed that Mr Giboin's submissions should be complete by 2:30 pm on the second day (Tuesday) so as to ensure that Miss McFarland's 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 trial concluded at the end of the second day.

The witnesses

25. The claimant's main witness was Paul Manwaring. He is Senior Legal Counsel at Yell. He has worked there since September 2009. His witness statement dealt with Yell's UK goodwill and reputation in the marks Yellow Pages and the walking fingers logo and the efforts Yell has gone to to protect its rights. He then turned to Yell's understanding 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 Pages Software", which Mr Giboin had emphasised in his opening. After court on the first day, 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 the software was being sold by a business registered in Panama and the web page was aimed at the North American market. In cross-examination Mr Giboin rightly put to Mr Manwaring that this document had been annexed to the defence filed in October 2009 and questioned whether he had read it. Mr Manwaring's 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 the defence but had not focussed on this annex (it is one of 100 pages of annexes). Nothing about this point undermined Mr Manwaring's credibility in the slightest.
27. Yell also relied on the evidence of Luke Humble. He is a specialist in online marketing and website design. He is independent of Yell. He drew Yell's attention to the defendants' websites in the first place. The purpose of this evidence from Yell's point of view is that it submits Mr Humble was misled by the defendants' websites into associating them with Yell. He was not available for cross-examination since he now 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 Humble's evidence in context below.
28. Yell's 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 in market research particularly in the telecommunications and banking sectors. He gave evidence addressing Yell's UK goodwill and reputation both online and via the Yellow 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:-

i) James Spong. He lives in Australia. His evidence was that Yellow Pages of Australia has two trade marks: the name yellow pages and the walking fingers logo. There is an Australian website www.yellowpages.com.au. He confirmed that from Australia it is possible to view certain websites including www.yell.com (the claimant's website), certain Spanish websites with names which generally involve the words "paginas amarillas" (i.e. yellow pages in Spanish) and www.yellowbook.com.

ii) Duncan Garden. He lives in Azerbaijan and works as a drilling fluids engineer for Halliburton Eurasia. He was asked by Mr Giboin to look at the "local country yellow pages". He stated that this is a website called www.yellowpages.az/yp/. He said that Yellow Pages of Azerbaijan has a trade mark and displays an image of the website which combines some Cyrillic text, some Roman script in English, including the words "Yellow Pages Azerbaijan", and the walking fingers logo. He confirmed that the same websites James Spong accessed from Australia, are accessible from Baku, Azerbaijan.

iii) Glenn Spong. He lives in Australia. He explained that the Transport Yellow Pages logo using a truck was designed by him for and on behalf of www.transport-yellow-pages.com. He said the basis was not www.yell.com but an inverse of the Yellow Pages Association logo.

iv) Terence Zhang. He is resident in Sichuan, China. His witness statement was a barely legible photocopy. His evidence was that Mr Giboin had come to China in 2008 and was there for several months. As I understand the statement, Mr Zhang was one of the individuals who 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 Mr Giboin) worked with companies in India (and somewhere else) on this project which Mr Giboin was managing. After the trial, I received an email message from Mr Giboin with a clear copy of Mr Shang's statement which confirmed that "we" worked for companies in the UK, Australia and India.

v) Andrew Smith. He is a website developer and tutor for HTML training courses (HTML or HyperText Markup Language is one of the main computer programming languages used to create websites). Mr Smith met Mr Giboin in 1998 when he lectured Mr Giboin as part of a web developer's course. They met again when Mr Giboin approached his company to become involved in a project to develop a website called Hauliers UK Network. Mr Giboin managed to get 4 companies involved in the exercise by agreeing a share value based on the success of the company and the fact that each partner completed their agreed task. He stated that Mr Giboin knew technically all the elements and served as the designer and architect for the project. Mr Giboin did not do any of the development work, his role was of architect, design and project manager. Mr Smith then deals with the origins of the Zagg system. Although only based in Lanark, Mr Giboin did not seek to call Mr Smith as a live witness, but Yell did not object to the statement.

vi) Alex Spong. He lives in Australia (I believe at the same address as James Spong). Alex Spong is the sole director of Zagg Australia PTY Ltd and is authorised to speak on its behalf. Zagg Australia PTY Ltd was initially involved with Zagg.eu and Transport Yellow Pages but, according to Alex Spong, is no longer involved. According to Mr Giboin's Facebook page Alex Spong is his nephew.

30. Mr Giboin is described by Mr Smith as a respected designer and architect of web systems and as someone who has always been innovative. Mr Giboin described himself 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 the past including HBOS, Orange and Scottish Widows. He has also described himself as a "scrum master", which means essentially the same thing as project manager in this context.
31. Mr Giboin's 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 articulate exponent of his case, quite capable of getting his point across. He had a tendency on occasions to get carried away with his argument. He answered questions posed to him from the bench directly.
32. At one stage, when the court had risen, I was told that Mr Giboin had objected to one of counsel's submissions and accused counsel of lying. Such an accusation was entirely wrong and wholly unwarranted. The accusation was about a submission from counsel about something Mr Giboin had said in court. Miss McFarland's submissions were solidly and soundly based on the transcript of the proceedings at all times. Mr Giboin owed counsel an apology, which he gave.

The law

33. The Trade Marks Act 1994 implemented Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks and made provision in connection with Council Regulation (EC) No. 40/94 on the Community Trade Mark. In 2008, a codified version of the directive was produced, which is Directive 2008/95/EC of 22 October 2008. The directive includes the following provisions:

Article 5

Rights conferred by a trade mark

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

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

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between 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 of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, 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 services thereunder;

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 to identical or similar mark and identical or similar services); and s10(3)/Art 5(2) (unfair advantage or detriment to distinctive character or repute). Yell made no detailed submissions 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 used identical marks on identical services. The correct test for identity of marks was referred 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) of the Directive must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification 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.

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 a registered trade mark may take the case outside one of "identity" (see para. [51]). This is clearly sensible - one word can 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 at paragraphs 42 to 76. In summary, the principles I derive from Jacob LJ's judgment are:

i) Specifications of services should be scrutinised carefully and not given a wide construction, they should be confined to the core or substance of the possible meanings [per Jacob LJ paragraphs 43-44, citing Avnet v IsoAct [1998] FSR 16]

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

iii) However a new article can fall within an old specification [Jacob LJ paragraphs 48 – 50]

39. Thus, in the Reed case the question was not whether "employment agency services" has changed its meaning over time because of the advent of the internet but whether the services provided over the internet by the defendant in that case were those of an employment 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 goods whereby 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 cited with approval the summary of the case law of the CJEU used by the UK Trade Marks Registry for the purpose of considering likelihood of confusion. The summary is derived from the judgments of the CJEU in Case C-251/95 Sabel BV v. Puma AG. [1997] ECR I-6191; Case C-342/97 Lloyd 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 & Austria GmbH [2005] ECR I-8551; Case C-39/97 Canon Kabushiki Kaisha v. Metro Goldwyn Mayer 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 the sign in context (as opposed to the consideration of notional fair use in the registration context).

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

42. Although Article 5(2) appears to be restricted to cases in which the goods are "not similar" to those registered, in fact it is not so limited: Case C-292/00 Davidoff & Cie SA and Zino Davidoff v Goffkid [2003] 1 WLR 1714.
43. As Floyd J explained in Hasbro v 123 Nahrmittel 2011 [EWHC] 199 (Ch) (paragraph 213), the provision is concerned with extending the protection for marks which have a reputation beyond the protection which is available for marks which do not. In Case C-301/07 PAGO International GmbH [2010] ETMR 5, the Court of Justice considered the reputation required for the corresponding test in the CTM Regulation and said that:

The degree of knowledge required must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services 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 or connection in the minds of the relevant public between the marks and the sign complained of: see Case C-487/07 L'Oreal v Bellure NV at para 36. In paragraph 218 of Hasbro, 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 certainly sufficient to bring the marks to mind in a significant class of consumers, even if the effect 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 be detrimental 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 the requirement of unfair advantage was established because:

by bringing the mark to the mind in a way which falls short of actual confusion, the defendants are taking advantage of the goodwill which attaches to the marks. To those who make the connection, the signs complained are misappropriating the cachet 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 the internet. Indeed, much of Mr Giboin's defence rests on the proposition that the internet is a place, a kind of global territory separate and distinct from the UK.
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 set out in 800-FLOWERS Trade Mark [2000] FSR 697 (Jacob J as he then was), and on appeal 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 in a number of cases. Two are of particular assistance in the context of the present application. In 800-FLOWERS Trade Mark [2000] FSR 697 Jacob J had to consider whether or not Internet use of the mark 1-800 FLOWERS constituted a use of that mark in this country. 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 trade mark infringement anywhere in the world because website use is in an omnipresent cyberspace; that placing a trade mark on a website was "putting a tentacle" into the computer user's premises. I questioned this with an example: a fishmonger in Bootle who put his wares and prices on his own website, for instance, for local delivery can hardly be said to be trying to sell the fish to the whole world or even the whole country. And if any web surfer in some other country happens upon that website he will simply say "this is not for me" and move on. For trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him would be absurd. So I think that the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. In other fields of law, 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 placed on the Internet at a location outside the UK may constitute use in the UK simply because someone here chooses to download it. As he explained at [137] – [138]:

"137. I would wish to approach these arguments, and particularly the last of them, with caution. There is something inherently unrealistic in saying that A "uses" his mark in the United Kingdom when all that he does is to place the mark on the Internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A. By contrast, I can see that it might be more easily arguable that if A places on the Internet a mark that is confusingly similar to a mark protected in another jurisdiction, he may do so at his own peril that someone from that other jurisdiction may download it; though that approach conjured up in argument before us the potentially disturbing prospect that a shop in Arizona or Brazil that happens to bear the same name as a trademarked store in England or Australia will have to act with caution in answering telephone calls from those latter jurisdictions.

138. However that may be, the very idea of "use" within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the Internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different; but in such a case the advertisement or encouragement in itself is likely to suffice to establish the necessary use. Those considerations are in my view borne out by the observations in this court in Reuter v Mulhens [1954] Ch. 50. The envelopes on the outside of which the allegedly infringing mark was placed as advertising matter were sent by post into the United Kingdom by the defendants. It is trite law that the Post Office is the agent of the sender of a letter to carry it, and thus it was the defendants who were to be taken to have delivered the letter to the recipients and to have displayed the mark to them within this jurisdiction. No such simple analysis is available to establish use by the applicant within the jurisdiction if he confines himself to the Internet."

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

24. The same issue arose again before Jacob J in Euromarket Designs Inc v Peters and Crate & Barrel Ltd [2001] FSR 20. In that case the claimant brought proceedings for infringement of its UK and Community trade mark registrations for the words "Crate & Barrel" against the defendants who ran a shop in Dublin called "Crate & Barrel" selling household goods and furniture. The defendants had never traded in the UK and denied they had any intention to do so. Jacob J said at [21] - [24]:

"21. Here the point about the locality of the trade is even clearer. The defendants' website opening page has a picture of a piece of furniture with the words "Crate & Barrel" above. The text says: "An emporium of furnishings and accessories on four floors. We offer a wide range of services including, wedding lists, consultation and furnishings". There follow many picture of items. Only two (the "hurricane lamp" and the "beaded coasters") are said to be within the specification. I will assume that is so, though the point is not entirely beyond argument. The fact that there are only two items out of many - items which could easily be removed – shows the triviality of the complaint.

22. Now a person who visited that website would see "ie". That would 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 a reference to a shop. So what would the visitor understand? Fairly obviously that this is advertising a shop and its wares. If he knew "ie" meant Ireland, he would know the shop was in Ireland: otherwise he would not. There is no reason why anyone 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 up a host of irrelevant "hits". You expect a lot of irrelevant "hits". You expect a lot of irrelevant sites, moreover you expect a lot of those sites to be foreign. Of course you can go direct to a desired site. To do that, however, you must type in the exact address. Obviously that must be known in advance. Thus in this case you could get to the defendants' site either by deliberately going there using the address, or by a search. You could use "Crate" and "Barrel" linked Booleanly. One could even use just one of these words, though the result then would throw up many more irrelevant results.

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

25. Miss Vitoria says that the Internet is accessible to the whole world. So it follows that any user will regard any website as being "for him" absent a reason to doubt the same. She accepted that my Bootle fishmonger example in 800 FLOWERS is that sort of case but no more. I think it is not as simple as that. In 800 FLOWERS I rejected the suggestion that the website owner should be regarded as putting a tentacle onto the user's screen. Mr Miller here used another analogy. He said using the Internet was more like the user focusing a super-telescope into the site concerned; he asked me to imagine such a 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 you can look into the defendant's shop in Dublin. Indeed the very language and the Internet conveys the idea of the user going to the site – "visit" is the word. Other cases would be different – a well-known example, for instance, is Amazon.com. Based in the 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 its business here, and offering and operating a real service of supply of books to this country. These defendants have done none of that."

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

25. I believe it is clear from these authorities that placing a mark on the Internet from a location outside the UK can constitute use of that mark in the UK. The Internet is now a powerful means of advertising and promoting goods and services within the UK even though the provider himself is based abroad. The fundamental question is whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him. All material circumstances must be considered and these will include the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser's intention.

53. A key part of Mr Giboin's case before me was the submission that a website owned and controlled outside the UK could not commit infringements even if UK companies used 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 are no laws supporting a UK company buying on a non UK or global website. Yell can't force a company not to buy on another site" (p3 of Mr Giboin's Defence of Application 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 the UK corporate defendants and to show that if money was paid in a transaction carried out via the websites the money was paid to an entity in Miami, Florida. So, in his witness statement dated 22^nd 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 moved well out of the reach of the UK courts and since that is the case I have no obligation to tell you where. Its Yell's job to show the court the transaction and a company in the UK to make this case stick."
54. The cases I have mentioned above are authority for the proposition that the fact that a website may be owned or controlled from outside the United Kingdom is not determinative, nor is the fact that the counterparty to a financial transaction taking place via the website may be abroad. Therefore, Mr Giboin's submissions on the law are wrong. Both factors are matters to be taken into account but there is no law that a company 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 statute has been carried out. The activity which amounts to an infringement under the statute is the use of a sign in relation to goods or services. The statute is territorial and to infringe 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 the goods or services, the appearance of the website, whether it is possible to buy goods or 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 is whether or not the average consumer of the goods or services in issue within the UK would 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 the UK", rather than repeat the analysis above and recognising that that is an imprecise way 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 the defendant and damage to the goodwill caused by that misrepresentation (see the Jif Lemon case: Reckitt & Colman v Borden [1990] RPC 341). The extended definition of passing off set out in the Advocaat case: Erven Warnink v Townend [1980] RPC 31 is not germane.
58. Goodwill can consist in a name or device associated in the public mind with a business. The defendant makes a misrepresentation if it uses a name on its own goods which is sufficiently similar to the claimant's name that customers are misled into associating the defendant's goods with the claimant's and if customers are likely to be misled by such a misrepresentation into buying goods from the defendant when they think they are buying from the claimant, then the claimant's goodwill will be damaged. 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 mark infringement 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 mark infringement and passing off, he is nevertheless liable for the acts of others (whether the 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 "two or more persons who act in concert with one another pursuant to a common design in the infringement". In Unilever v Gillette [1989] RPC 583 at p608 to p609 Mustill LJ in the Court of Appeal identified the need for a common design to do acts which amounted to infringement and some act on behalf of the defendant in furtherance of that design. The common design or agreed common action need not involve an explicitly mapped out plan, a tacit agreement will be sufficient. Also there is no need for a common design to infringe, it is enough if the parties combine to secure the doing of acts which prove to be infringements.
62. Yell referred to the judgment of Arnold J in L'Oreal v eBay [2009] EWHC 1094 for further guidance on this issue. The relevant section of Arnold J's judgment is at paragraphs 343 to 352. There the learned judge dealt briefly with the question of whether there is a Community law dimension to accessory liability for trade mark infringement. 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 was properly applied he did not need to go into the matter further. Before me neither side submitted that it was necessary to consider a Community law dimension to joint liability for trade mark infringement and I need not do so. In the context of domestic law the principal authorities relied on by Arnold J were CBS v Amstrad and Unilever v Gillette which I have mentioned above. He also cited the judgment of the Court of Appeal given by Peter Gibson LJ in SABAF v Menegetti [2002] EWCA 976 which indicates that the underlying notion is that the party must make the infringing act his own in order to become liable and the presence of common design, concerted action or 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 clear that 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 liable merely because he is an officer, he must be personally involved in the commission of the tort to an extent sufficient to render him liable as a joint tortfeasor. Whether he is sufficiently involved is a question of fact, requiring an examination of the particular role played by him in the commission of the tort. The approach to this joint liability is the 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 or induced those acts to be done by the company or if, in some other way, he and the company 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) v Ordnance technologies (UK) [2007] EWHC 2875 (Ch) and Arnold J in L'Oreal v eBay at paragraphs 360 – 382. This is the section in Arnold J's judgment in which he grappled with the difficult question of whether eBay were liable as a result of their failure to prevent third parties selling infringing goods via the eBay website. This is difficulty territory. In my judgment the question of liability as a result of an omission or failure to act does not arise on the facts of this case and I do not need to address the issue 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 – early 1970s when the GPO published printed directories. One of the earliest advertising campaigns for Yellow Pages directories was the "Let Your Fingers do the Walking" campaign in the 1970s. It was followed in the 1980s by the famous and award winning television advert "Fly Fishing by JR Hartley". In the 1990s BT undertook extensive 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 Yell and the website www.yell.com became a single online portal for both business and consumer users of the directory service. Before that, Yell's advertisers and consumers had had access to different sites. In June 2001, BT sold the Yell division to a consortium of private equity investors for £2.14 Billion. All the relevant intellectual property rights were sold to the company which became Yell Ltd.
67. Since 2000 Yell has continued to advertise and promote Yellow Pages and the walking fingers logo extensively. The accounts of Yell's advertising agency show that between 1983 and 1999 £132 Million had been spent on advertising. The sum spent between 1999/2000 and 2009 is some £55 Million.
68. Yell earns very substantial revenues from its business. For example its revenues from printed directories in 2009 (the last year for which figures are available) were £504 Million. In fact this includes both Yellow Pages and Business Pages directories but it is 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 placing advertisements. The businesses can choose from a range of advertisement shapes and sizes and specially prepared graphics.
70. Yell's accounts include information showing how many unique advertisers are in their printed directories and also how many searchable advertisers are available online. In 2009 Yell.com had over 200,000 searchable advertisers and Yell earned an average of £772 per searchable advertiser. In the same year the paper directories had 390,000 unique advertisers earning an average of £1,293 per advertiser for Yell. (The figures for the paper directories include both Yellow Pages and Business Pages but again it is clear 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. It was not disputed by Mr Giboin.
73. In cross-examination Mr Giboin asked Mr Manwaring how much of the £55 Million spent 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 accepting that evidence. It is a very substantial sum.
74. Mr Giboin also asked how many hits the Yell.com website received annually. Mr Manwaring explained that Yell determine a figure for "unique visitors" to their website 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 because an internet enabled mobile phone will have a different IP address from a home or work computer and so the same person may appear as two or three IP addresses. Yell's 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 visited the 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 irrelevant here.
76. Mr Saville's evidence was that his firm had carried out extensive research work for Yell regarding their market position in the UK. It involves testing recognition of Yellow Pages and the walking fingers logo. His opinion was that Yellow Pages and the 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 used extensively elsewhere in the world in the same sort of way as Yell uses them in the UK 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 Federal Circuit (the CAFC) dated 26^th July 1995 in BellSouth Corporation v DataNational Corporation and others case 91-1461. The case was heard by Chief Judge Archer and Circuit Judges Rich and Mayer. BellSouth appealed from the decision of the Trade Mark Trial and Appeal Board of the United States PTO sustaining an opposition against their application to register a walking fingers logo as a design mark for classified telephone directories. The CAFC held that the "walking fingers" logo was 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 & Telegraph Company (AT& T) and its subsidiary regional operating companies that made up the Bell System began using the slogan "Let Your Fingers Do The Walking" with the "Walking Fingers" logo on their classified telephone directories. The regional Bell System operating companies published telephone directories covering their respective geographic regions. The companies sold advertising space in the commercial listings or "Yellow Pages" portion of the directories and gave the directories to their customers without charge. The slogan and logo were the subject of a nation-wide advertising campaign.

The "Walking Fingers" logo has undergone changes since its introduction but the conventional one at issue here was first introduced in the early 1970's.

Although the logo is undoubtedly familiar to many, AT& T never filed a trademark registration application for this most famous version of the "Walking Fingers" logo. In fact, the record is quite clear that AT& T never treated the logo as a trademark at all. Instead, prior to the divestiture of BellSouth in 1984, AT& T allowed any and all competing publishers of telephone directories to use the logo on their own directories.

AT& T and its operating companies were not the only publishers of telephone directories prior to their divestiture by AT& T. Independent (i.e., non-Bell) telephone companies and directory publishers also published telephone directories and sold advertising space in commercial listings. AT& T freely allowed these different source publishers to use the logo. The record is clear that AT& T consciously chose not to enforce any proprietary rights it might have had in the "Walking Fingers" logo at issue. 1 The "Walking Fingers" logo has since been adopted and used by most companies who publish classified telephone directories.

Footnote reference 1 (above) states:

In 1978, AT& T filed a trademark registration application for a two fingered version of the "Walking Fingers" mark. This version is different from the one at issue that is used by most of the industry. The two fingered version of the mark was registered 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. The point 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 not have to resolve whether the logo itself came from the GPO in the UK or AT&T in the USA or some other national telephone organisation.
82. Mr Giboin submitted that this showed that the walking fingers logo and Yellow Pages were generic and owned by nobody. That statement is too broad. No doubt the logo and the term Yellow Pages are indeed generic in the USA. There is an American organisation 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 same group was a member of the Yellow Pages Association. In my judgment it does not matter 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 is generic in one territory does not mean that by definition it is generic in another. The question is always a matter of fact in any given territory.
83. As Chief Judge Archer noted in the BellSouth 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 the otherwise nondescriptive term is not policed as a trademark and it is commonly used to describe a type of product, see Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 100, 10 USPQ2d 1748, 1752 (2d Cir. 1989). In this case, the board found the "Walking Fingers" logo to be in the latter category, at least in the nonterritory. While the "Walking Fingers" logo may once 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 the evidence in support of the summary judgment motion, the logo at least in the nonterritory now identifies the product--classified telephone directories-- generally.

84. By "nonterritory" Chief Judge Archer meant the large part of the USA outside BellSouth's nine states. Chief Judge Archer continued:

This case is somewhat unusual because of the unique circumstances surrounding the phone giant AT& T and its subsequent divestiture of operating companies. Opposers, however, clearly demonstrated that AT& T did not protect the logo prior to divestiture but rather allowed all other publishers to use the logo. AT& T's policy regarding the logo resulted in near universal use of the logo prior to and at the time BellSouth acquired separate rights to portions of AT& T's business and assets in the divestiture and sought to register the "Walking Fingers" logo as a trademark. The opposers' evidence shows that at this time the use by other publishers was widespread and frequently in overlapping territories. From the totality of this uncontested evidence it is clear that the board properly concluded that the "Walking Fingers" logo was in the public domain for the identified designation at the time of BellSouth's application. BellSouth therefore cannot claim succession to any trademark use by its predecessor company, AT& T

85. So while the "Walking Fingers" logo may once have been a strong candidate for trade mark protection in the USA, as a result of the particular circumstances pertaining in that 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 USA does 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 Garden that directories branded Yellow Pages and using a walking fingers logo are available in Australia and Azerbaijan respectively. Whether the words and logo are distinctive in 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 internet it is possible for them to see websites which use the term "yellow pages" and a walking 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 computer screen. Examples include www.yellowpages.com which Mr Giboin states belongs to AT&T and www.yellowpages.com.au which Mr Giboin states belongs to Telstra the Australian telephone company. Again Yell did not dispute this.
88. However Mr Giboin made no attempt to show that any of the various websites accessible to persons in the United Kingdom which involve the words "Yellow Pages" or the logo, and which are not related to Yell, are directed to consumers in the UK or offer services of any kind to UK based customers. I was shown no example of a 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 by a website branded Yellow Pages (or using the logo) which were directed to customers in the UK.
89. Of course it can be said that an individual in the UK might want to use an American "Yellow 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 activity occurs 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 usage elsewhere 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 internet and websites like www.yellowpages.com, however there is no evidence those sites offer a service directed at the UK and in my judgment there is no reason to think that the 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. They are undoubtedly associated with a paper directory service. In my judgment the public in the United Kingdom associate the words "Yellow Pages" and the walking fingers logo with a UK directory service however it is delivered. In other words that association exists whether they encounter the directory on paper, by telephone or on the internet. The public associates the words and the logo with the claimant's 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 by Andrew Smith. He became involved with Mr Giboin as a result of a project to develop 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 for himself on an IT project development website called Elance. The Hauliers UK Network site was a freight exchange system in which road haulage companies could find each other and exchange freight. Thus a company running a load from London to Aberdeen could find that there was another company with a need to pick up goods in Aberdeen and run them to London. The two jobs naturally interlock and the freight exchange 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 Giboin went 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 haulage industry. Although there are two domain names it is clear that behind them is a single system 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. the software which does the work behind the scenes. As I understood the evidence there is really only a single back end system in this case. I will call the totality of the two websites and the software and database(s) behind them the "Zagg system".
95. At the heart of the Zagg system is a database. The Zagg system then offers various functions to users based on that database. The functions include a directory of transport companies and other things. There is a freight exchange system like the Hauliers UK Network system, there are classified advertisements whereby users can offer 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. Mr Giboin said that his system was "about 15 times bigger than Yell". By that he meant that "we had 15 applications against their one", in other words his system offers 15 functions 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 transport companies. The search can be performed using a map which appears as part of the site. Transport companies can have a simple listing in the directory or they can buy more sophisticated advertisements which will appear in the system and be presented to 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 was referring to the fact that the system allows users to access the various functions I have mentioned. Although Mr Giboin never put it this way, it appears that within the overall Zagg system, the name transport-yellow-pages is usually used to refer to the transport directory service whereas "zagg" and the zagg.eu front end usually seems to refer to the whole system.
98. Mr Giboin explained that the Zagg system is meant to be global in nature so that it is accessible 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. What this 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 carried out 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 internet based payment system.
100. For example on 26 March 2006 Mr Giboin posted on Elance a request for an experienced PHP My SQL programmer and database manager to take over a project to 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 from programmers 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 in the database of the Zagg system were created by "scraping". Scraping is a term for trawling the internet for information and then putting it together on your own website. The Elance documents show that Yell's own website was a source of at least one entry 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 would pay $1.00 per set. The computer workers who were to carry out this task were to be given addresses of websites to go to, get the company's logo and any slogans and make sure the banner advert reflected the company's 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 Giboin's statement as to that but in any case the system has clearly 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 do any programming work himself and I do not doubt it. Mr Giboin clearly organised the whole project whereby the Zagg system has been created and developed. His skill is as a project manager. He clearly exercises personal control and authority over the whole thing. So for example at various stages in these proceedings Mr Giboin has offered to change aspects of the websites. In making those offers it is plain that Mr Giboin 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 classified advertisements for vehicles for sale. He explained that these had been scraped from elsewhere and that the companies concerned did not know these vehicles were present in this way. They were 18 months out of date. At one stage Mr Giboin suggested that none of the site was live and it was all still under development. That is not consistent with Mr Smith's evidence, who stated that he had carried out work which he picked up through a system which is part of zagg.eu called "Buy a Website". It is not necessary to resolve the question of whether every function and application in the system is up and running or whether part or all of it is not yet live. There is not enough evidence before me to do that. I rather think in the light of Mr Giboin's 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 United Kingdom based transport businesses. The websites claim that there are 90,000 companies listed. There is no evidence whether this is right or wrong but it is clear that 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 which they 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 not infringe their rights.

Issues

106. The issues I have to decide are:-

i) Do the websites infringe?

ii) Are the websites passing off?

iii) Are the websites directed to the UK?

iv) Who is operating / controlling websites and are any of the defendants liable?

107. It is convenient to pose the question "do the websites infringe?" although of course only a person can do that (s10 of the 1994 Act "A person infringes a registered trade mark if …"). Nevertheless someone is behind the websites one way or the other and I will 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 the validity of the registered trade marks. A minor dispute arose when Yell submitted that there was no "counterclaim" by the defendants. The point being made was that there was no challenge to validity. Mr Giboin objected to the contention that he had no counterclaims and it is correct that first Defence Statement does contain a section in which Mr Giboin makes various claims which are in effect counterclaims. The counterclaims are:

i) that Yell should stop showing its "Internet Yellow Pages (IYP)" on other websites;

ii) that the domain name dispute about www.transport-yellow-pages.com should be referred to ICANN;

iii) that Yell should drop its reference to "internet pages" from its claim for trade mark infringement unless Yell changes the name of its website from Yell.com to www.yellowpages-co.uk and actually uses the words "yellow pages" on its website;

iv) that Yell should drop its passing off claim unless they withdraw from the Yellow Pages Association and create a new logo which does not resemble the current walking fingers logo Yell use

v) Yell should "re-register their trade mark Yell as the IYP and not Yellow Pages and exclude the use of Yellow Pages as being part of the Yell trade mark".

109. None of these consists of a challenge to the validity of the two registered trade marks relied on by Yell. A charitable interpretation of item (v) above might suggest that it contains 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 the websites. This is not an easy task because a good number of services are offered via transport-yellow-pages.com and zagg.eu. Mr Giboin did not suggest that there was any substantive difference in the services available via each domain name. I find as a fact that all of the services available are offered via both domains.

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

111. Yell's pleaded case is that the defendants offer a business directory service and a database relating to transport services and transport companies. Mr Giboin did not disagree. I find as a fact that this element of the claimant's case is proved in relation to both sites. Whoever is responsible is offering (inter alia) a business directory service and a database relating to transport services and transport companies to the public. However neither side focussed on how those services stand in relation to the two trade mark registrations in issue.
112. Although Yell pleaded an identical mark/identical services cases in relation to the '391 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 directory service 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 (Annex 2). Yell did not draw my attention to any particular aspect of the '121 specification which bears on the pleaded case. In class 35 the '121 mark includes "compilation of business directories, market analysis and research" but it seems to me that that service 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 also includes "business information, advertising and promotional services provided on-line from a computer database or by means of web pages on the Internet" in class 35 and 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 that latter definition. In class 39 the specification also includes "Information services relating to travel, transport and packaging and storage of goods" and "provision of information relating to travel and transport". I hold that the pleaded services are also identical to these.

Advertising services

115. In addition to their pleaded case Yell emphasised that the Zagg system offers other services. Mr Giboin did not object to this. The trial itself was the first time some aspects of the Zagg system became clear.
116. Mr Giboin explained that his system offers a service whereby users can buy enhanced forms of advertisement and are offered templates for the adverts. In my judgment that means the sites supply "advertising and publicity services" within the specification of the '391 registered trade mark and also "marketing, promotional and advertising services" within the '121 mark. The core of each definition seems to me to focus on a service whereby the client is helped in order to produce advertising or promotional material. I doubt, but do not have to decide, whether merely offering advertising space for sale amounts to the core of either definition but when that offer is combined with templates in order for the particular advertisement to be created as a result of a collaboration between the Zagg system and the advertiser, then it seems to me that those 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 they stand in relation to the registered trade marks can be summarised in this table:

Claimant's trade marks	Services offered by Zagg system	Services offered by Zagg system
	business directory service and a database relating to transport services and transport 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 forms it took over various dates in October 2009 and November and December 2010. It is convenient to consider the appearance of the page exhibited as the first page in Mr Manwaring's exhibit PWM 61. As printed the page shows a number of features:

i) The words "Transport Yellow Pages - Global directory, get listed free" run along the top.

ii) On the top left side there is a black silhouette of a truck with yellow walking 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 truck logo is at Annex 3.

iii) There are 5 small advertisements for transport businesses around the left hand and lower edge.

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

v) On the right is a map obscured with an advertisement for another transport business.

vi) Under a box with the words "Are you listed" is written "Transport Yellow Pages".

120. It is clear that the website uses the sign "Transport Yellow Pages" and a walking fingers logo (in a truck motif) in relation to all the services available including offering a business directory service and a database relating to transport services and transport companies and offering advertising services. The sign "Transport Yellow Pages" is used both as words appearing on the web pages and by the domain name transport-yellow-pages.com, which in my judgment consumers would also regard as a sign 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 word "transport" adds very little indeed by way of distinctiveness given that the services on offer relate to transport. However the addition of descriptive wording to "Reed" create "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 any modification 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:

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

ii) The sign only differs from the registered mark by the additional descriptive word "transport" which has a clear reference to the nature of the services on offer.

iii) "Yellow Pages" is the dominant element in the sign and that is identical to the registered trade mark.

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

v) The relevant consumer of advertising services must be a business wishing to avail itself of these services. Assuming the site is directed to the UK (see below), Yellow Pages is a well known mark to UK businesses looking to advertise themselves.

vi) Mr Giboin says that Transport Yellow Pages just means transport directory. In effect Mr Giboin was raising a possible defence under Art 6 of the Trade Marks Directive. However on the facts, while Mr Giboin may be right as far as consumers in the USA are concerned, in my judgment he is not right in the UK. "Yellow Pages" is distinctive here. It is recognised in the UK as a trade mark, it is not a description.

vii) In my judgment UK businesses encountering the site would be likely to think that the site was linked with the familiar Yellow Pages directories. They would think it was a site from the same stable.

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 transport services and transport companies" which I have decided is "not similar" to the services covered by trade mark '391. However that does not bar a claim to infringement under Art 5(2). The '391 mark YELLOW PAGES clearly has a reputation 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 the claimant's mark YELLOW PAGES in the mind of the average consumer irrespective of the difference between the services registered and the services provided by the website. "Yellow Pages" is the dominant part of "Transport Yellow Pages" and that dominant part is Yell's mark. That use takes an unfair advantage of the distinctive character of Yell's mark because it misappropriates the cachet attached to it in the mind of UK consumers. YELLOW PAGES is recognised as the mark of a respected source of directory information in the UK. I do not need to go on and consider whether 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 with a 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 it's not illegal. Because on the internet, worldwide, unlike Coca Cola, nobody owns 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 and the walking fingers logo. Mr Giboin knows that his mark "Zagg" has no recognition among investors. Their reaction to "Zagg" would be "who are you?". Hence he uses Yell's brands in order to get attention. That is taking unfair advantage of the distinctive character of Yell's marks. Of course Mr Giboin clearly believes that what he 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 services then in my judgment there is still infringement under Art 5(2) in that respect for the same 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 "transport yellow pages" absent the logo.
132. For the truck logo (Annex 3), looking at the matter globally the following factors are important:

i) The services are identical to the services registered. This applies to the business directory service, the database relating to transport services and transport companies and the advertising services.

ii) The truck logo is obviously not identical to the registered mark. The closer of the two registrations is the one with "yellow" above "pages" since that is how those two words appear on the truck logo.

iii) The additional word "transport" has a clear reference to the nature of the services on offer. It is not distinctive.

iv) "Yellow Pages" is an important element in the sign and that element is identical to an important element in the registered trade mark.

v) The walking fingers on the back of the truck convey precisely the same idea as the fingers in the registered trade mark. The details differ (there is no open book) but the concept is identical. The fingers are almost identical including the presence of horizontal lines of background colour.

vi) The registered trade mark is not yellow but the yellow colouring in the truck logo if anything enhances the risk of confusion with "yellow" pages.

vii) The truck image is a distinctive image but conveys a reference to the character of the services on offer.

viii) The relevant consumer might be either a business wishing to appear in the directory and/or use the advertising services to enhance their appearance or someone looking for a transport company. Assuming the site is directed to the UK (see below), Yellow Pages and the walking fingers logo is a well known mark to such people.

ix) In my judgment a relevant consumer encountering the site would be likely to think that this truck logo indicated that the site was linked in some way to the familiar Yellow Pages directories. They would think it meant that this was from the same source.

133. Assuming the site is directed to the UK (see below) then it would be infringing under Art 5(1)(b) / s10(2).
134. For the words "transport yellow pages" alone (both on the page and in the domain name), factors (i), (iii), (iv) and (viii) above are applicable. Furthermore:

i) The words "yellow pages" are an important and distinctive element of the registered trade mark even without the waking fingers logo aspect.

ii) In my judgment a relevant consumer encountering the site would be likely to think that this truck logo indicated that the directory and database available on the site were from the same source as the familiar Yellow Pages directories.

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 or "transport yellow pages" would infringe because the average consumer would associate or link those signs with the registered trade mark. The use would be unfair for the same reason as given above for mark '391. There is infringement under Art 5(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 dates from October 2009 to December 2010. The layout of the page is the same as the page I considered above for transport-yellow-pages.com. Using the same list features set out above in paragraph 119, the similarities and differences are:

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

ii) The truck logo (Annex 3) in transport-yellow-pages.com has been replaced by a grey/blue logo consisting essentially of the word Zagg on top of three grey/blue chevrons.

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

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

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

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

138. The words Transport Yellow Pages appear as a prominent title on the page here whereas 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 on transport-yellow-pages.com). Mr Giboin referred to this truck although it is not clear why. 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 Presence" "For 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 in the Transport Yellow Pages directory available through zagg.eu and to buy an enhanced 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 user looks 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 to be free although an extended service is also possible – presumably for a charge.
142. In summary, like the transport-yellow-pages.com website, the zagg.eu site uses the sign "Transport Yellow Pages" and a walking fingers logo (in a truck motif) in relation to all the services available including offering a business directory service and a database relating to transport services and transport companies and offering advertising 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 difference to any of the issues of trade mark infringement I have addressed above for the transport-yellow-pages.com website and the same conclusions follow. The zagg.eu site (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 mark infringement. They are:-

i) While the '391 mark for the words "yellow pages" has a relatively limited specification of services, Yell's case in passing off is that its goodwill and reputation in the UK associated with that mark is more broadly based.

ii) While the '121 mark relates to two particular forms of the walking fingers logo, in practice Yell has used other versions of this logo as well and they are relevant to a passing off claim.

iii) 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, particularly zagg.eu, falls to be considered and also the absence of the claimant's mark Yell.

iv) Absence of real-life confusion has more relevance to a passing off claim than in the case of trade mark infringement (per Floyd J in Hasbro paragraph 235).

145. Mr Giboin did not dispute that in the UK in the context of paper directories Yell has a very substantial goodwill and reputation associated with the name Yellow Pages and the walking fingers logo (in its various forms). In my judgment he was right not to do so.
146. Mr Giboin's point related to the how Yellow Pages and the logo (in its various forms) stand on the internet. In effect he disputed the proposition that Yell's goodwill and reputation relating to those marks extended to the internet. As I have found above in considering the facts, Yellow Pages and the walking fingers logo are well known brands in the UK. Their association with a UK directory service exists in the public mind whether the public encounters the directory on paper, by telephone or on the internet. Accordingly Yell's goodwill and reputation extends to the internet from the point of view of the public in the UK. It is true that the claimant uses the mark "Yell" as part of its internet presence as well and I have no doubt the public recognise that mark as well.
147. The fact that users of the internet in another country such as the USA may not regard the marks as distinctive is irrelevant when, as here, the marks are distinctive from the point of view of the UK public. The relevant public will include a person in the UK seeking to use a directory to find a business in the UK and also a UK business thinking of advertising itself in a directory.
148. In considering misrepresentation the presence or absence of real-life confusion falls to be considered. There are three points: Mr Humble, Mr Giboin's mass emailing and whether the site is live or not.
149. Mr Humble states in his witness statement that "my first reaction when I saw the zagg.eu website was that the services offered were provided by Yell". This was because of the use on the site of "Yellow Pages" and the walking fingers logo. His evidence was provided under a hearsay notice as he is (now) resident in Australia. He was not cross-examined. Yell relies on the evidence of Mr Humble as evidence of real-life confusion.
150. The incident arose from Mr Humble's position as website manager for Transport Exchange Group Ltd (TEG) which he held from 2007 - 2009. TEG has subsidiary businesses including two called Haulage Exchange and Courier Exchange. TEG regard these names as their trade marks. They refer to a freight exchange business operated by TEG. Mr Humble encountered zagg.eu when looking at TEG's competitors. Haulage Exchange and Courier Exchange were being used on the zagg.eu website to attract customers. When Mr Humble thought that Yell were behind the zagg.eu site he was concerned that TEG would end up in a legal fight with Yell to try and stop Yell from using TEG's marks. Soon after he discovered that zagg.eu was not a Yell site.
151. Mr Humble had dealings with Mr Giboin in order to try and prevent use of TEG's marks. TEG then decided not to pursue their complaint about zagg.eu until TEG's UK trade mark application for "Courier Exchange" had been registered. Mr Giboin referred to this in his submissions but it is irrelevant.
152. Although Mr Humble cannot be said to be an ordinary member of the public, in my judgment his evidence supports Yell's case that the zagg.eu website is likely to deceive the public in the UK into thinking that the site is associated with Yell, as a result of the use of Yellow Pages and the logo. It is notable that of the two sites, the zagg.eu site uses the grey/blue Zagg chevron logo which might have tended to reduce the risk of confusion at least to a degree.
153. Mr Giboin's mass emailing was something he relied on. In a witness stated dated 22^nd February 2011, he said that he had sent at least 20,000 emails to customers or potential customers of the Zagg system but that "not one person complained to Yell or yellow pages showing clearly that they were just not confused". The evidence about this exercise was vague but it did appear that Mr Giboin had a legitimate point to make on the basis of what he said.
154. However in closing an important detail emerged. Mr Giboin explained that the emails were sent as a "mail shot" test. He said "Lots of people enquired 'How much does it cost?' I think I got one enquiry 'Are you Yellow Pages. If not, what's your charges?'" In other words the picture presented in Mr Giboin's witness statement was not a complete one. Thus at least one UK recipient had at least been caused to wonder whether the Zagg system was in fact Yellow Pages. Yell submitted that this positively assisted their case although whether confusion at a rate of 1 in 20,000 is significant I am not prepared to say. Mr Giboin was given considerable latitude as a litigant in person presenting material which had not been properly exchanged in advance. However I am not prepared to place reliance on this email exercise in the circumstances. It is clear from what Mr Giboin said in reply that the whole story was not presented at the outset and I am not confident the whole picture was before the court. I will not rely on Mr Giboin's evidence about this exercise either way.
155. Whether or not the site is live is relevant to the question of real-life confusion. Apart from Mr Humble who was not a potential customer anyway and the single email reply which has not been properly addressed, there is no evidence of real life confusion by potential customers in this case. Why not? If the marks complained of are likely to cause confusion, why is there no evidence of actual confusion from the claimant's side? Mr Giboin supplied what I believe to be an answer in that he indicated that the sites are not yet "live". Even if they are live to some extent it is tolerably clear that they are not operating on a major scale so far. Thus an absence of actual confusion is explicable in this case and I do not need to go on and consider whether this is the sort of case in which confusion is unlikely to come to light anyway.
156. Mr Saville's witness statement, which mainly focussed on the UK recognition of Yell's marks, ended with an expression of his opinion that both websites would be likely to cause confusion. He said that whilst some of the public may consider the sites to be a low grade imitation of Yell's website, a proportion of the public would believe that these are part of Yell's Yellow Pages business. Mr Giboin did not seek to cross-examine Mr Saville and his opinion is therefore unchallenged. Mr Giboin did not invite me to refuse to admit it and I will take it into account. However in my judgment in a case like this one in which the market for the services concerned is not a specialist or technical one, an opinion of this kind should not be given a great deal of weight having regard to the other evidence.
157. Taking the two sites as a whole, there are two factors which deserve particular attention in the context of passing off: (i) the absence of the mark "Yell" and (ii) the presence of the mark "Zagg" (to a greater or lesser extent) both as a word and, on zagg.eu, by the grey/blue Zagg chevron logo.
158. On point (i), although the public recognise Yell as a mark associated with the claimant in the UK, especially on the internet, its absence from a site which otherwise used the marks "Yellow Pages" and the walking fingers logo would not be taken as a strong indication that this was a product of some other, different business.
159. On point (ii), the mark Zagg is clearly distinct from any of the claimant's marks however it is not so dominant on the zagg.eu website so as to negate the effect of the claimant's marks. I notice also that it was the Zagg.eu site which confused Mr Humble. Many people visiting the site will not regard "Zagg" as an indication that the site comes from an entirely independent source. Given the presence of Yellow Pages and the walking fingers logo on the truck, they are likely to think that a business they have never heard of (Zagg) may have teamed up with the claimant in some way or perhaps the claimant is using a sub-brand focussed on the transport market.
160. The use of "transport yellow pages" and the walking fingers logo on both sites - transport-yellow-pages.com and zagg.eu both make a misrepresentation which is likely to lead to deception and confusion on the part of members of the public in the UK, who will associate the sites with Yell. This will be damaging to the claimant's business not least because, for example, some customers will buy advertising from the Zagg system which they would have bought from Yell.
161. Assuming they are directed to the UK, these sites are passing off.

iii) Are the websites directed to the UK?

162. Mr Giboin submits that the two websites operate abroad. In court he sought to demonstrate that if a member of the public seeks to pay money for a service provided by either website, the money is paid to an entity abroad. The identity of the recipient is not clear but it is an entity at the address of Mr Giboin's sister in Florida, USA. I accept that evidence. Mr Giboin also contended that the work done to create the Zagg system was carried out abroad. I have no reason to doubt that although, if it matters, there is not sufficient evidence on the point to be definitive. Mr Giboin also submitted that the registrants for the two domain names are now entities situated abroad. Again that appears to be correct. Mr Giboin's submissions appeared to be that the registrant for each is the same entity as the one in Florida receiving payments. I have no reason to doubt that although again if it matters there is not sufficient evidence on the point to be definitive.
163. Yell submitted that the websites are indeed directed to the UK. The major points which I extract from Mr Manwaring's evidence are:

i) Both sites include a representation of the Union Jack denoting a link to the UK.

ii) The default search country on both homepages is the United Kingdom.

iii) A search for "Dealers" in all territories on the zagg.eu website which was conducted on 23^rd November 2009 produced a list of 1,928 results all of which are for UK based businesses.

iv) In the examples exhibited to Mr Manwaring's evidence, the banner advertisements which appear on both homepages are all UK based transport companies. Purely as examples they include "Red Funnel The Isle of Wight Specialist" and "Grant of Buckie Int'l Trpt". Those adverts frequently include UK based telephone numbers and a number of ".uk" domain names.

164. As I understood part of what Mr Giboin was saying, it may be that the Union Jack and other UK focussed aspects of the sites appeared because the Zagg system responds to the IP address of the computer accessing the website. Based on the IP address associated with the person seeking to access the websites over the internet the Zagg system could infer that the person was based in the UK and act accordingly. It may well be that a user based in Australia and accessing the same site will see a flag bearing the Southern Cross and advertisements for transport businesses in New South Wales. That does not matter. What matters is how the site looks and functions when someone in this jurisdiction interacts with it. The fact that the site adjusts itself to the location of the person interacting with it and acts accordingly simply serves to reinforce the claimant's case.
165. It is clear that a UK based customer accessing either website will be given a directory of UK transport businesses (if they wish). The directory service is (or at least includes to a material extent) a UK directory service. The businesses advertised on it are themselves offering services (transport) which are linked to the UK. Moreover a UK based transport business accessing the site will be offered the ability to appear in that directory and will be offered the advertising services in that context too.
166. The services which can be bought via the site, like advertising services, can be bought from the UK. The fact that the payments go abroad is not irrelevant but it is not determinative either. In my judgment the fact that the services can be purchased from here is of much greater significance than the fact the transaction involves Miami. Moreover these services are being supplied in the UK irrespective of the intended nationality of the potential customers the advertisement may be directed towards. A business in London may use the services of a London based advertising agency in order to create an advertisement which is intended to be used throughout the world. The advertising services in that example have been supplied in the UK. The same is true in this case.
167. Yell also drew attention to other parts of the site which were linked to the UK, such as the "history" section which explains the historical link to Hauliers UK Network, the "Privacy Information" which refers to the "1998 Data Protection Act" and mentions a charge in sterling (£10) and the "Terms of Use" which state that the terms and conditions are governed by English Law and are subject to the exclusive jurisdiction of the English Courts. Although it might seem ironic given Mr Giboin's clear submission that this English court had in fact no jurisdiction over the websites, nevertheless in my judgment these aspects are minor matters.
168. All of these services will be supplied under and by reference to the marks Yellow Pages and the walking fingers logo. These are marks which would be recognised by UK based consumers as familiar trade marks.
169. Mr Giboin emphasised that neither domain name includes a ".uk" suffix. While that is true, there is no evidence as to how significant a factor this would be to a member of the public in the UK. In my judgment it is a minor matter. Mr Giboin also submitted that the ".com" suffix indicated a global company. That does not undermine Yell's case. Global companies supply services in the UK. The same point goes for the ".eu" suffix. European organisations also supply services in the UK. Truly I rather doubt that most consumers would even notice the suffixes in the domain names in this case having regard to the other elements in the web pages which have a strong UK flavour.
170. Taking all these points together, the average consumers of the services in issue in this case within the UK would regard the sites as being directed at them. In my judgment the signs are being used in the United Kingdom in relation to the services in question. Both websites infringe Yell's trade marks and for analogous reasons both sites are engaged in passing off.

iv) Who is liable?

171. The major factors which tend to show that Mr Giboin is personally liable for the infringements and passing off are the following:
172. First, Mr Giboin was instrumental in setting up the entire Zagg system. He clearly led the project and was the architect and "scrum master" of the whole thing. It is his project. The fact that others may have done the detailed computer programming is neither here nor there.
173. Second, Mr Giboin clearly had and retains control over how the Zagg system functions and how it appears. He has the power to change the appearance of both sites. Indeed at various stages in these proceedings he offered to do so.
174. Third, Mr Giboin was the registrant of the zagg.eu domain name (although he is no longer) and he is a director of the second defendant which was the "registrant organisation" for that domain name. As regards transport-yellow-pages.com, Mr Giboin is a director of the third defendant which company was the registrant of that domain name. He was named as the administrative contact and technical contact for the domain.
175. Fourth, as regard the two corporate defendants, in my judgment Mr Giboin is personally responsible and liable for any relevant acts they have committed. There is no evidence that either company is anything other than a corporate alter ego of Mr Giboin himself.
176. At one time when Mr Giboin was working as an IT project manager for Carphone Warehouse, it appears that the third defendant Zagg Global Ltd invoiced Carphone Warehouse for his time. Mr Giboin wanted to rely on this. He said the invoices had been disclosed to the claimant during the proceedings. He had obviously expected the documents to appear in the trial bundles and was surprised when he could not find them. No doubt Yell's solicitors had not included them because they were peripheral. After the trial Mr Giboin sent emails to court which included copies of these invoices. Yell did not submit that I should ignore them and I have read them. They do not advance the issues. At best the point supports the claimant's case of a link between Mr Giboin and the third defendant.
177. On 21^st March 2011 I received a further email from Mr Giboin enclosing a copy of a P45 for him from the third defendant dating from 2008. It is not clear what point Mr Giboin is trying to make but if it is supposed to show that Mr Giboin is not now linked to the third defendant then it is far too late. I will not admit that evidence.
178. Fifth, although steps have been taken to hide the identities of the persons who are now the registrants of the two domains, this does not help the defendants. It is manifest that Mr Giboin himself was the instigator and prime mover behind that exercise. Moreover it is tolerably clear that the persons now named as registrants of the sites (whoever they are) are probably members of his extended family. It is clear that Mr Giboin's sister and daughter are involved in some way and so is Alex Spong, Mr Giboin's nephew. Mr Giboin did not seek to suggest that any members of the Spong family were not related to him.
179. Sixth, the payment Mr Giboin showed the court passed through an entity sharing an address with Mr Giboin's sister in Florida.
180. Set against this, in his witness statement dated 22^nd February 2011 Mr Giboin said that "the ownership has moved well out of the reach of the UK courts and since that is the case I have no obligation to tell you where". He was there referring to ownership of the two websites in issue. This reflects Mr Giboin's repeated point that ownership of the websites is now in the hands of entities which he has no obligation to name and which are foreign and outside the UK. Crucially in my judgment however Mr Giboin never asserts that these entities are outside his personal control. There is quite sufficient material to show that he retains practical control of these entities whatever or whoever they are. Mr Giboin made no attempt to assert or prove otherwise and in my judgment he retains a significant and substantial degree of control over these sites.
181. The statement of Alex Spong also falls to be taken into account. He speaks for an Australian company, Zagg Australia PTY Ltd. That company was initially involved with Zagg.eu and Transport Yellow Pages. Part of that involvement was as a shareholder of Zagg Portal Ltd – the erstwhile fourth defendant in these proceedings. Apparently when problems arose with Yell in the UK, Zagg Australia PTY Ltd was reorganised to detach itself from any connection with zagg.eu and transport-yellow-pages.com. His understanding is that transport-yellow-pages.com now operates from Miami and Zagg.eu operates from Slovenia. He says that he has nothing to do with the companies set up to replace Zagg Portal Ltd. During the trial Mr Giboin explained that his daughter Rebekah was in Slovenia. I should state that I make no finding one way or the other as to whether Alex Spong has anything to do with the websites today.
182. In my judgment Mr Giboin has made the two websites his own. The actions of those sites are the acts of Mr Giboin or of entities over which he retains detailed and specific control. Mr Giboin is personally liable for the torts identified in this judgment.
183. Insofar as he worked with others, such as the programmers setting up the site or the others (whoever they are) running the payment system today, all these acts are carried out pursuant to a common design to set up and run the Zagg system. That system infringes and Mr Giboin is jointly liable for it as a joint tortfeasor with the other persons concerned.
184. It is not clear that the two corporate defendants have actually done a great deal in this case, although there is no doubt they were linked to the websites in the past. The only reason they have not been struck off the companies register as I understand it is because of the existence of this action. Mr Giboin did not seek to refute the suggestion that at least at one time all three of the defendants in this action had a common design to set up and operate the Zagg system. No doubt since the two companies are in effect dormant they are not going to do anything in the future but in my judgment they are liable as joint tortfeasors in respect of the acts in the past.

v) the domain name - transport-yellow-pages.com

185. Yell contend that if trade mark infringement and/or passing off are proved, then the domain name transport-yellow-pages.com should be transferred to them.
186. Mr Giboin submits that this part of the dispute is a domain name dispute which Yell should take up with ICANN, the Internet Corporation for Assigned Names and Numbers. No doubt it is true that the dispute could be taken to ICANN but that does not mean that this court cannot deal with the matter. Mr Giboin also suggests (I think) that Yell would fail if they took the dispute to ICANN because of his point that "Yellow Pages" is generic on the internet. I have dealt with the factual position above. Mr Giboin may be right that because "Yellow Pages" in the USA does indeed appear to be generic, ICANN, which operates at a global level, would not find in Yell's favour based on the criteria they apply.
187. In my judgment what ICANN may or may not do is irrelevant. In considering both trade mark infringement and passing off, I have held that a member of the public encountering the website transport-yellow-pages.com would think they were encountering a website associated with Yell. That is because of the sign transport yellow pages and the logo. In my judgment the domain name itself contributes to this association in its own right, as another instance of the use of the sign "transport yellow pages".
188. The fact that Yell uses a domain named "Yell.com" is not relevant either. The issue is what the impact on the public will be of the defendants' websites.
189. Given the territorial nature of the claimant's rights, it can be said that domain transport-yellow-pages.com could have been used in such a way that there was no basis for a complaint by Yell. Yell do not complain about the Australian site www.yellowpages.com.au. No doubt it is directed to Australia. The fact that the domain name could have been used in a manner which did not involve UK trade mark infringement and passing off will be relevant in a case like BT v One in a Million [1999] FSR 1 (CA) in which the court is faced with trafficking in domain names per se. However that is not this case. In this case I have found that the site as presently constituted infringes and the domain name makes a material contribution to that infringement. The relief to be granted should include the domain too.

vi) The defendants' counterclaims

190. I can deal with these shortly.
191. The first one is that Yell should stop showing its "Internet Yellow Pages (IYP)" on other websites. There is no basis for this at all.
192. The second is that the domain name dispute about www.transport-yellow-pages.com should be referred to ICANN. I have dealt with that above.
193. The third is that that Yell should drop its reference to "internet pages" from its claim for trade mark infringement unless Yell changes the name of its website from Yell.com to www.yellowpages-co.uk and actually uses the words "yellow pages" on its website. There is no basis for this.
194. The fourth is that that Yell should drop its passing off claim unless they withdraw from the Yellow Pages Association and create a new logo which does not resemble the current walking fingers logo Yell use. Again there is no basis for this.
195. The fifth one is that Yell should "re-register their trade mark Yell as the IYP and not Yellow Pages and exclude the use of Yellow Pages as being part of the Yell trade mark". It is not clear what this means but it appears to mean that Yell should not use the mark "yellow pages" on the internet. There is no substance to this point either.

Conclusion

196. The claimant's case is proved. The defendants are liable for trade mark infringement and passing off.

Annex 1

Trade Mark No. 2329121:



Annex 2

SPECIFICATION OF TRADE MARK NO. 2329121

Class 09:

Telecommunications goods; data communications goods; satellite communications goods; computer software recorded on tapes, discs and cards; compact discs; CD-ROMs; video cassettes; audio cassettes; apparatus and instruments for recording, transmission, reception, processing, retrieval, reproduction, manipulation, analysis, display and print-out of sound, images and/or data; computer hardware and firmware; computer software; digital communications apparatus and instruments; magnetic and optical data media, namely magnetic discs, optical discs, floppy discs, magnetic tapes, magnetic cards, optical cards, integrated circuit cards, magnetic data carriers, optical data carriers; data terminals; facsimile machines; remote access on-line information apparatus and instruments, all being electronic; mobile and fixed telephone apparatus and instruments; pagers; laptop terminals and desktop personal computers; switchboards; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); computer software and telecommunications apparatus (including modems) to enable connection to databases and to the Internet; computer software to enable searching of data; computer games and computer games software; computer peripheral devices, namely memories, keyboards, electronic pens, mouse, monitors, interfaces; electronic memory cards, phone cards and electronic cards all for use with communications apparatus and instruments; debit cards, credit cards and charge cards; answering machines; compact disc players; laptop and notebook computers; video phones and video game cartridges; electronic notice boards; computer disc drives; aerials, cables and ducts all for electrical, telecommunications or optical signal transmissions; dealer boards (circuits); user (work) stations; electronic trading systems; web pages downloaded from the Internet in the form of printed matter; parts and fittings for all the aforesaid goods.

Class 16:

Paper; directory covers made from paper and cardboard; plastic for packaging and wrapping goods; cling film for palletization; plastic polythene bags; printed matter; printed publications; books; booklets, leaflets, brochures and manuals; posters; maps; photographs; tapes and cards, all for the recordal of computer programs and of data; computer programs in printed form; stationery; office requisites; advertising and promotional materials; wrapping and packaging materials; instructional and teaching materials (other than apparatus); advertisements; directories; directory covers; printed tickets, coupons and vouchers; parts and fittings for all the aforesaid goods.

Class 35:

Business advisory, consultancy, research and information services (being information falling in Class 35 including statistical information); receipt, processing, storage, display, recording or retrieval of data; collection, processing and storage of messages and data; storage of information; compilation, provision, storage and retrieval of business and commercial information; marketing, promotional and advertising services; systemisation of information into databases and data processing services; telephone answering services and message handling services; production, preparation and presentation of advertising matter; compilation of business directories, market analysis and research; compilation and transcription of data; preparation of business reports; sales promotion; database management services; electronic database services for the provision of business information; compilation of advertisements for use as web pages; business information, advertising and promotional services provided on-line from a computer database or by means of web pages on the Internet; compilation and systemisation of information into computer databases; business customer relationship management and problem solution services; organisation, operation and management of promotional, incentive and loyalty schemes; import and export services; data processing services; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods and services from a web site specialising in classified directory, business advertising and business information goods and services or from a catalogue specialising in classified directory, business advertising and business information goods and services by mail order or by means of telecommunication; database, on-line, interactive database and Internet information, advisory and consultancy services, all relating to the aforesaid services.

Class 36:

Information and advisory services relating to finance and insurance, shares and share dealing; financial services; banking services; credit card, debit card, token card and charge card services; credit services; computerised financial services; discount card services; issuing of travel cards; credit card, charge card and debit card authorisation, validation and issuance services; information and advisory services relating to finance and insurance, provided on-line from a computer database or by means of web pages on the Internet; financial information disaster recovery services; issue and redemption of tokens and vouchers; automated payment services; database, on-line, interactive database and Internet information, advisory and consultancy services, all relating to the aforesaid services.

Class 37:

Information, advisory and consultancy services relating to construction, repair and installations; installation, maintenance and repair of computer hardware, computers and computer networks; vehicle maintenance; installation of electrical and electronic apparatus and instruments and components, of telecommunications networks, apparatus, instruments, installations, instruments and systems, of sound, image and data transfer and information apparatus, installations and links, of signalling systems, communications systems and networks, of electronic messaging and information systems and electronic data links, and of parts of the aforesaid; database, on-line and interactive database information, advisory and consultancy services all relating to the aforesaid services.

Class 38:

Telecommunications services; cellular communications services; mobile communications services; digital communications services; satellite transmission services; communications by fibre optic networks; transmission of messages and data; remote data access services; electronic data interchange services; telecommunication of information (including web pages), computer programs and any other data; electronic mail services; database and Internet information services, (being information falling in Class 38); provision of telecommunication access and links to computer databases and to the Internet; data communications services; communication by computer terminals; services for the transmission, provision or display of information for business or domestic purposes from a computer-stored data bank or via the Internet; transmission and processing of data from remote locations to mobile telephones; on-line information services (being information falling in Class 38); telephone messaging services; hire and rental of telecommunications apparatus, installations and instruments; advisory and information services relating to cellular communications tariffs; advisory and information services relating to the provision of voice and data communications services; paging services; monitoring, organisation and analysis of call information; call screening services; call diversion and call re-routing services; multiple message sending services; call recording services; facsimile transmission services; call barring services; call alerting services; advisory services, provision of information and preparation of reports, all relating to telecommunications; telecommunication and dissemination of information in audio or visual form; telecommunication services relating to the receipt, processing, storage, display, recording, retrieval or transmission of data; providing access to computer databases and to online computer services; professional consultancy services in the field of telecommunications, message sending, message receiving and data transmission.

Class 39:

Information services relating to travel, transport and packaging and storage of goods; transport, packaging and storage of goods; delivery of goods and mail; travel and tour agency services; travel administration services; travel services; ticket reservation services; booking agency services; provision of information relating to travel and transport; advisory and consultancy services relating to the aforesaid services; provision of car parks and car parking services; passenger transport and air cargo transport services; courier services; vehicle hire services; tourist information services; transport services; freight-forwarding; booking of seats for travel; cargo tracking services; database, on-line, interactive database and Internet information, advisory and consultancy services, all relating to the aforesaid services.

Class 41:

Information and advisory services relating to education, training, entertainment, sport, recreation, theatre, television, music, news and publishing; publishing services; publication of business directories, market analysis and research; electronic game services and competitions provided by means of the Internet; publication of books, directories, guides, maps, magazines, manuals and printed matter; education, training, instruction and study services; arranging, conducting and organising seminars and educational, recreational and instructional conventions, conferences, congresses, exhibitions and demonstrations; entertainment services; booking and ticketing services by electronic and computer means; electronic database services for films, theatre and entertainment; preparation of reports relating to publishing services; news programme services; information relating to entertainment, education, training, sport, recreation, news and publishing provided on-line from computer databases or web sites on the Internet; reservation, booking and ticketing services for entertainment; database, on-line, interactive database and Internet information, advisory and consultancy services, all relating to the aforesaid services.

Class 42:

Information and advisory services relating to the weather; legal services; compilation, analysis, retrieval and provision of information; computer systems integration services relating to wholesale and retail financial services; leasing access time to computer databases and to on-line computer services; computer database consultancy services and design of computer databases; writing, development, updating and design of computer software; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; hire, rental and leasing of computers and data processing installations and of apparatus and installations for use therewith; provision of information (being information falling in Class 42) on-line from a computer database or provided from facilities on the Internet; computer systems analysis; recovery of computer data; planning (design) and design services all relating to telecommunications networks, apparatus and instruments; professional consultancy services in the field of data network apparatus and instruments; information technology services; computer and software consultancy services; expert, professional and scientific consultancy services; testing services; research and development services; inspection services; information services; systems integration services; computer and telecommunications systems and network analysis; hire, rental and leasing of computer and data processing hardware, software and firmware; database, on-line, interactive database and Internet information, advisory and consultancy services, all relating to the aforesaid services.

Class 43:

Reservation services for hotel accommodation; information and advisory services relating to restaurants; booking and reservation services for accommodation and restaurants.

Class 45:

Airport fire and security services; monitoring of alarms; rental of alarms and of security and surveillance apparatus; property guarding services

Annex 3: The Truck Logo (in black and white)