UK companies operating on the Internet breathed a collective sigh
of relief this week following the High Court’s ruling in a David and
Goliath battle over trade mark protection.
The court decided that US companies cannot make automatic trade mark
claims to Internet sites which have the same name as their
The case was brought by Prince plc, a UK information technology services
company, after US tennis racquet manufacturer Prince Sports Group
claimed the UK firm had infringed its trade mark.
Prince plc had registered its prince.com Web site address in 1995, but
at the beginning of the year the US company Prince Sports applied for
the domain name and discovered it was already in use.
Prince Sports, through its US attorneys, demanded the UK firm hand over
the domain name and agree not to use the Prince name in any future
Many UK Internet users had feared that if the judge had decided in the
sports group’s favour it would have opened the floodgates for US
companies to demand the sole right to the ’.com’ global Web address.
Prince, the UK company, had not registered its name as a trade mark
despite registering the domain. Sally Tate, the company’s joint managing
director, warned other companies to ensure that they registered
Prince plc took action against the US company for injunctions and
damages on the grounds that the threat was ’wholly unjustifiable’. Mr
Justice Neuberger of the High Court agreed.
A figure for damages will be decided in September.