Passing off
Case Note: Pitman Training
Ltd. and Another v Nominet UK and Another
John Lambert
Oct 1997
This case note originally appeared on the Lancaster Buildings website
In Pitman Training Ltd. v Nominet UK the second defendant was a division of a subsidiary of a well known publishing company that published business management, education and development materials in the name or style of "Pitman Publishing" while the first plaintiff carried on a training business also in the name of "Pitman". At one time both businesses had been part of a single enterprise but the training and publishing sides were sold off separately in 1985. At the time of the sale the parties agreed that the plaintiff would only publish books, periodicals or magazines ancillary to its training business and that it would only trade under a name that included "Pitman" in such a way as clearly indicated that its use was in connection with training or correspondence courses. On the 16th February 1996 the second defendant applied to InterNIC and Nominet UK, the first defendant, to register the domain names "pitman.com" and "pitman.co.uk" respectively. The names were found to be available and were allocated to the second defendant. In March 1996 the second plaintiff, which was a franchisee of the first plaintiff, asked Nominet UK whether "pitman.co.uk" was available for registration. Despite the second defendant's registration it was told that it was so the second plaintiff applied to register "pitman.co.uk" as its domain name. For a reason that was never explained to the Court, the second defendant's registration of "pitman.co.uk" was removed and the domain name was allocated to the second plaintiff. The second defendant discovered that its domain name had been allocated to the second plaintiff in December, 1996 when it tried to connect to that address. It protested to Nominet UK that it had been the first to register. Nominet UK responded by transferring the "pitman.co.uk" domain name back to the second defendant.
The plaintiffs issued proceedings against Nominet UK and the second defendant applying for interlocutory injunctions to:
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restrain Nominet UK from suspending or removing their e-mail or other Internet services under the name "pitman.co.uk" and |
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the second defendant from using that name for such services. |
The plaintiffs relied on passing off, wrongful interference with their contract with their Internet service provider and abuse of process. The Vice-Chancellor found none of those causes of action to be viable. In his view, passing-off was a strange proposition:
"… bearing in mind that Pitman Publishing has traded under the style Pitman for nearly 150 years and that in 1985 when the Pitman businesses were sold off separately it was agreed that the purchaser of the publishing business would continue to trade under the style Pitman. Indeed, it was agreed that the purchaser of the training business would not trade under that style unless the name `Pitman' was accompanied by the name `training'."
The plaintiffs contended that the second plaintiff had acquired goodwill from its use of their Web site since March 1996, but they could point to only two e-mails that they had received since the site opened. Not surprisingly, the Vice-Chancellor observed that the evidence did not even begin to support the contention that the public associated "pitman.co.uk" with the second plaintiff. Indeed, he expressed the view that it was highly improbable that that could have happened. If there was any confusion between the plaintiffs and the second defendant it was because they each used the style "Pitman" for their respective trading purposes. The claim that the second defendant had wrongfully interfered with the second plaintiff's contract with its ISP depended inter alia on an implied term that the Vice-Chancellor did not consider to be necessary for the business efficacy of the contract and which no prudent service provider would have accepted. As for the complaint of "abuse of process", the Vice-Chancellor could not see how a tort of abuse of process could be committed if the process to be abused had never been instituted. Neither counsel nor His Lordship could point to a case in which the tort had been committed simply by a threat of proceedings. Moreover, any proceedings that the second defendant might have brought against Nominet would have been for the express purpose of restoring its domain name and not for any collateral purpose
