A major US on-line flower delivery service has been told by a UK
court that it cannot register 1-800 FLOWERS as a trade mark because
the number is not distinctive of its business and also it did not
own the equivalent free UK phone number. Use of the name on a
US-based web site was not considered use in the UK for the purposes
of the application.
In the US, 1-800-FLOWERS.COM is a leading provider of flowers
and gifts and 1-800-FLOWERS is one of the country’s most recognised
brands in that market. The numeric equivalent of the order number
was 1-800 356 3977. In the UK, the holder of the equivalent
free-phone number, 0800 356 3977, was a company called
Phonenames.
The UK company objected to the application by 1-800 FLOWERS for
a UK trade mark since Phonenames used the number for a franchised
business of selling flowers. Originally, the trade mark registrar
allowed the US company its trade mark. Phonenames challenged that
decision in court and won, thereby rejecting 1-800 FLOWERS as a
trade mark. The judge ruled that trade mark laws could not apply
where a web site was not addressing the whole world but only a
local clientele. He added:
"Although it was possible to access the US site from the UK and
order flowers, the service was carried out wholly in New York. If
the applicant had a reputation here it was goodwill in a US-based
business. Anyone here who knew of '1-800 FLOWERS' would expect
service under that mark to be carried out in the US. It by no means
followed that anyone here knowing of the applicants or their US
number would think that the use of the UK number was by the same or
a connected enterprise."
The US company then appealed, without success.
The higher court held that the original judge was correct to
reject the claim by 1-800 FLOWERS because its use of the mark,
without having the UK 0800 number, “would inevitably lead to
confusion, if not also deception.” He also doubted that the US
company had the intention to use the mark in the UK.
