Passing off

Mecklermedia is one of a trilogy of cases on the Brussels Convention that came before the courts in early March 1997. The others were Pearce v Ove Arup Partnership Ltd. [1997] FSR 641 and Coin Controls Ltd. v Suzo International (UK) Ltd. [1997] FSR 660. Together they establish that an English court may in certain circumstances entertain an action for the infringement of a foreign intellectual property right abroad.

Facts
The plaintiffs in Mecklermedia were a Delaware company and its English subsidiary which had organized three trade fairs in the United Kingdom called "Internet World", "Document Delivery World" and "Internet World International". They had also published for some time a magazine in the United States called "Internet World" and they had recently launched a British edition. Their URLs on the Worldwide Web were www.internetworld.com and www.iworld.com respectively. The defendant was a German private company which organized trade shows in Düsseldorf and Vienna also called "Internet World". It published English language brochures in the United Kingdom to attract visitors and exhibitors from this country which it circulated to those whose names had appeared in brochures for the plaintiffs' British shows. It also asked the DTI to promote its shows in the United Kingdom.

The Claim
The plaintiffs issued proceedings against the defendant claiming the usual relief for passing-off. The defendant applied to set aside the writ or stay the proceedings.

Judgment

The application came on before Jacob J who noted the general rule provided by art 2 of the Brussels Convention that persons domiciled in a contracting state should, subject to the provisions of that Convention, be sued in the courts of their domicil but that an exception arises under art 5 (3) for tort, delict or quasi-delict. In those cases the defendant may also be sued in the place where the harmful event occurred. The defendant argued that the harmful event occurred in Germany but the judge disagreed. The fact that all the activities of the defendant took place abroad did not matter so far as passing off was concerned: "To do acts here which lead to damage of goodwill by misleading the public here is plainly passing-off. To do the same acts from abroad will not avoid liability."

The circulation of the defendant's sales literature in England was likely to cause confusion and damage the plaintiffs' goodwill in England. As that would spawn a cause of action in England the judge refused to set aside the writ.

The defendant's next argument was that proceedings should be stayed under art 21 because it had brought trade mark infringement proceedings in Munich against one of the plaintiff's licensees which, in effect, involved the same cause of action. The judge rejected that argument on the ground that both the parties and the cause of action were different.