Full case report

Radio Taxicabs (London) Ltd v Owner Drivers Radio Taxi Services Ltd

Reference [2004] RPC 351
Court Chancery Division

Judge John Randall QC

Date of Judgment 12 Oct 2001


Summary

Intellectual property – Passing off – Instrument of fraud – Domain name – Injunction – delivery up


Facts

The Claimant and Defendant were operators of radio circuits for licensed black cabs in London. The Defendant set up a website at www.dialacab.co.uk in April 1998. It also set up a direct link from www.radiotaxis.com, such that anyone entering that domain name into their internet browser would come across the pages of the Defendant’s website. The Claimant was unable to adduce any evidence of actual confusion in the two years of the operation of the website and the link. The Claimant contended that the combination of the name and the installation of the automatic direct link to the Defendant’s website constituted actionable passing off, and that the domain name www.radiotaxis.com was being used by the Defendant as in instrument of fraud which should be delivered up.


Issue

(1) Whether there was actionable passing off; (2) Whether the domain name was being used as an instrument of fraud which should be delivered up.


Held

Although the Claimant did have a reputation within the industry as “Radio Taxis”, it did not have such a reputation amongst members of the general public. The words “Radio Taxis” were not distinctive of the Claimant’s business. And since there was no real risk of confusion amongst members of the trade, the claim in passing off failed. The court was not satisfied that the Defendant had acted with the intention of taking advantage of the Claimant’s name, reputation or goodwill, or of diverting business from it. As such, the claim that the name was an “instrument of fraud” which should be delivered up could not succeed.


Comment

The decision is of interest in the burgeoning area of on-line passing off. It also illustrates how difficult it is to establish distinctiveness in trade names using descriptive words.


Instructing Solicitors

Simons Muirhead & Burton for the Claimant. Fladgate Fielder for the Defendant.