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On 27th April, 2001 Mr Christopher Floyd QC sitting as a deputy Judge handed down his judgment in this passing-off case.
Background TeleWorks Limited was a small company, with a net worth of around L50,000, which dealt in the provision of domain name registration services, website and e-mail hosting, design and supply of computer network infrastructure and general IT support. The company was based in the Lee Valley Technopark in north London and had been incorporated since 1997.
The Defendant is the holding company for TeleWare plc and Workplace Systems plc. TeleWare was founded in 1992. It is worth noting that TeleWare had used the capitalised 'W' in its name since its inception in 1992. The company's core product is a highly sophisticated system, `Intelligent Telephony Service' (ITS). This system permitted an individual employee to be allocated a single telephone number on which he/she could be reached anywhere. The Defendant's typical contract worth is in the region of L100,000 to L200,000.
Workplace was established in 1986. This company sells labour management software with installation costs of between L50,000 and L1m.
In August 2000 TeleWork Group plc was floated on the stock exchange. In the publicity leading up to the flotation, the Claimant became aware that the name for this new company was to be TeleWork Group plc, the name having been chosen as an appropriate combination of TeleWare and Workplace.
Prior to the flotation the Claimant's solicitors wrote to the Defendant claiming that use of TeleWork Group plc would constitute passing off. The Defendant also had a product called the Integrated TeleWork Product and BT were using the Defendant's software in, for example, its BT Homecarer TeleWork product. The flotation went ahead and in October 2000 the Claimants served proceedings. The parties agreed that an expedited trial should be sought and the matter came to trial in March 2001.
The Claimant's case fell into three main parts.
- The Claimant had established goodwill and reputation in the name TeleWorks Limited.
- The Defendant's use of TeleWork, both in the company name and in relation to its products, would constitute a misrepresentation so that customers would confuse the two companies and their products/services.
- The Claimant had suffered damage as a result of the misrepresentation.
Another...