Samherji HF v Oddur Fridriksson

Where an online publication uses a trader’s marks, branding and materials so as to represent itself as the trader’s website, a strong claim in passing off may arise even if the publisher is not carrying on a business. A website may target the United Kingdom as well as other countries; a .co.uk domain, English-language content and UK search visibility supported that conclusion.

An interim injunction restraining a UK-targeted website may be granted where passing off, copyright infringement and malicious falsehood are likely to succeed, the service-out gateways are satisfied, and England is the appropriate forum. The court may take account of the practical utility of an order even if enforcement against a foreign defendant may require further steps.

The claimant, an Icelandic fishing business, owned UK-registered marks and a logo. The defendant, an Icelandic artist, operated an art project critical of the claimant’s alleged conduct in Namibia.

He registered the domain name samherji.co.uk and used it for a website that reproduced the claimant’s mark, logo, styling and brochure. The site included an unauthorised purported apology by the claimant. The claimant sought an interim injunction, permission to serve proceedings in Iceland, and Norwich Pharmacal-type disclosure.

The central issues were the merits of claims for trade mark infringement, passing off, copyright infringement and malicious falsehood; jurisdiction and forum; and whether interim relief was appropriate.

1. The application was granted. The court would grant interim injunctive relief and permission to serve the relevant claims out of the jurisdiction. The disclosure claim should fall away because the defendant had been identified.

2. The court proceeded on the assumption that the claimant had to show that it would probably succeed at trial before an injunction affecting freedom of expression could be granted under section 12(3) of the Human Rights Act 1988.

3. The website targeted the United Kingdom. Its .co.uk suffix, English-language content and UK Google search visibility supported that finding. Accessibility and intended readership in Iceland or Namibia did not detract from it, since a website may target more than one country at once.

4. The trade mark claims under sections 10(1) and 10(2) of the Trademarks Act 1994 raised a serious issue to be tried, but were not shown probably to succeed. They depended on use in the course of trade, and there was a substantial argument that an artist’s project was not a trade in the relevant sense. The injunction was therefore not based on those claims.

5. There was a strong case in passing off. The website’s use of the claimant’s marks was intended to represent that it was the claimant’s website, although it was not. The tort did not require the defendant to be carrying on a business. There was also a strong copyright claim because the logo and brochure had been copied and made available to UK users. Parody was unavailable because the use was not distinguishable from the originals, and any public-interest defence was too uncertain and narrow to affect the conclusion.

6. The court also found a good claim in malicious falsehood. The site’s false presentation as claimant-sponsored was deliberate, and the purported apology created a risk that visitors would be discouraged from trading with the claimant.

7. There was a good arguable case under CPR Practice Direction 6B, paragraph 3.1, Gateways 2 and 9. The English-law claims and the UK-targeted website made England the natural forum. The balance of convenience favoured suspension of the website, which would not prevent the defendant expressing his views by other means. An order had practical utility because domain and hosting providers might act on it even if the defendant did not comply.

not stated in the judgment.