1-800 Flowers Inc v Phonenames Ltd

Factual and Procedural Background

This opinion concerns an appeal by Company A against a decision made by Judge Jacob on 20 December 1999, which allowed an appeal by Company B against a decision of the Registrar of Trade Marks. Company A had applied on 13 February 1993 under the Trade Marks Act 1938 to register the trade mark 800-FLOWERS for services involving receiving and transferring orders for flowers and floral products. Company B opposed the application. The Registrar initially rejected the opposition and accepted the mark for registration subject to disclaimers. Company B appealed to the High Court, where Judge Jacob allowed the appeal and refused the registration, also ordering Company A to pay Company B’s costs assessed summarily under the Civil Procedure Rules. Company A now appeals the refusal of registration, and Company B cross-appeals the summary assessment of costs. Both appeals were granted permission to proceed.

Legal Issues Presented

1. Whether the mark 800-FLOWERS is inherently capable of distinguishing the relevant services under section 10 of the Trade Marks Act 1938.
2. Whether registration of the mark would be contrary to section 11 of the 1938 Act because its use would be likely to deceive or cause confusion.
3. Whether Company A has used or proposes to use the mark in the United Kingdom for the purposes of sections 17 and 68 of the 1938 Act, thereby establishing proprietorship.
4. The proper assessment of costs following the appeal and cross-appeal.

Arguments of the Parties

Appellant's Arguments

• The mark 800-FLOWERS, as a combination of numerals and letters, is inherently capable of distinguishing Company A’s services from those of others as of the application date in 1993.
• The mark is not a UK telephone number and should not be treated as such; the judge erred in equating 800-FLOWERS with a UK telephone number.
• The foreseeable use of alpha-numeric telephone numbers in the UK in 1993 was overestimated; public awareness was minimal and would require education.
• The mark has been used in the UK via "overspill" advertising primarily aimed at the US market, demonstrating its use as a trade name.
• There is no inherent illegality or deception in the use of the mark, and any confusion arises from Company B’s subsequent acquisition of the corresponding UK telephone number.
• Company A has used the mark in conjunction with its US telephone number 1-800-FLOWERS without deception or confusion.
• Use or proposed use in the UK is established through telephone orders placed from the UK to the US number and through the operation of an interactive website accessible in the UK.
• Passing off cases support the proposition that minimal user or presence of customers in the UK is sufficient to establish proprietorship of the mark.

Opponent's Arguments

• The mark 800-FLOWERS is intended to be used in conjunction with the corresponding UK telephone number 0800 FLOWERS, which Company A does not possess.
• Company A has made minimal effort to establish a genuine business presence in the UK; only one UK-specific advertisement was placed.
• The mark is not inherently distinctive under section 10, as it is effectively an encoded UK telephone number and telephonic significance was reasonably foreseeable in 1993.
• Use of the mark in the UK would cause confusion and deception because the public would assume the mark relates to the UK telephone number, which Company B holds.
• Evidence of telephone calls or internet use from the UK to the US number does not constitute use or bona fide intention to use the mark in the UK under sections 17 and 68.
• The Applicant’s intention to use the mark in the UK is conditional upon obtaining the corresponding UK telephone number.
• The judge’s summary assessment of costs was appropriate; the appeal was a one-day paper-only case with no disclosure or witnesses.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by considering the inherent distinctiveness of the mark 800-FLOWERS as of the application date in 1993, applying section 10 of the Trade Marks Act 1938. It concluded that the mark, in substance, represented an encoded UK telephone number (0800 FLOWERS). The court accepted that the use of alpha-numeric telephone numbers was reasonably foreseeable in the UK at that time, even if public awareness was limited. Consequently, the mark lacked the inherent capacity to distinguish the services as required by section 10.

Next, under section 11, the court found that registration would be contrary to law because use of the mark without possession of the corresponding UK telephone number would inevitably cause confusion and deception. The confusion arises not from the subsequent allocation of the number to the Opponent but from the Applicant’s failure to possess the number at the application date.

Regarding use or proposed use under sections 17 and 68, the court held that the Applicant had not demonstrated sufficient use or bona fide intention to use the mark in the UK. Evidence such as UK-based telephone calls to the US number and internet access were insufficient to establish use in the UK. The Applicant’s intention was conditional upon acquiring the UK telephone number, and minimal advertising or business presence in the UK was shown. The court distinguished principles from passing off cases, noting that statutory requirements for registration are more exacting.

On the cross-appeal concerning costs, the court found that the judge erred by applying an arbitrary tariff without detailed consideration of the Opponent’s actual incurred costs. The proper approach to summary assessment requires focus on the detailed breakdown of costs, with the court’s experience used only as a guide. Accordingly, the summary assessment was set aside and a detailed assessment was directed.

Lord Justice Buxton added that the mark’s selection was inextricably linked to the Applicant’s US freephone number and that the dilemma in the case arose from the Applicant’s reliance on use of the US number in the UK while seeking registration in the UK. He emphasized that the mark’s telephonic significance and the Applicant’s failure to possess the corresponding UK number undermined distinctiveness and created confusion.

Holding and Implications

The court dismissed the Applicant’s appeal and allowed the Opponent’s cross-appeal.

The direct effect of this decision is that the application to register the trade mark 800-FLOWERS in the UK was properly refused due to lack of inherent distinctiveness, likelihood of confusion arising from use without possession of the corresponding UK telephone number, and insufficient evidence of use or bona fide intention to use the mark in the UK. The summary assessment of costs in favor of the Opponent was set aside, and a detailed assessment was ordered.

No new precedent was established beyond the application and reaffirmation of existing principles relating to trade mark distinctiveness, confusion, use in the jurisdiction, and costs assessment. The decision underscores the importance of possessing or having rights to telephone numbers referenced by a mark when the mark’s distinctive character depends on such numbers, and clarifies the evidential threshold for use or proposed use in the UK in trade mark registration proceedings.