Prior to 1998 the Claimant, an American company which was formerly known as Jetfax Inc until it changed its name to efax.com in February 1999, carried on business as a supplier of computer hardware. In February 1998 the company launched a new service on the internet converting fax to e-mail messages. This was a free service and involved the subscribers, who logged on at www.efax.com, being allocated a US telephone number for use as their fax number. Faxes sent to that number would be automatically converted into digital form and forwarded to the subscriber’s e-mail address. In November 1999 the Claimant relaunched its efax service in the UK using UK telephone numbers.
Since January 1998 the Defendant’s business had offered services which included a fax to e-mail service similar to that offered by the claimant. In February 1998 the Defendant had acquired and registered the name efax.co.uk on the internet. The service was not made available to the general public, however, until August 1999 when the service became automated and available on the internet. The Defendant charged for the service.
In February 1999 the Claimant’s European operations manager had discovered that the name efax.co.uk was already taken up. He therefore contacted the Defendant on a number of occasions and offered to purchase the domain name; these offers were refused. In November 1999 an action was commenced for passing off. The Claimant applied for interim injunctive relief restraining the Defendant from passing off his services as and for those of the Claimant by the use of the name “efax”. The Defendant cross-applied for the claim to be struck out on the grounds that it was bound to fail or, in the alternative, for summary judgment in his favour.
The Claimant contended that it had established a substantial reputation and goodwill in the UK, based on the fact it had approximately 17,000 UK subscribers of whom 5,000 had used the service. Further the Claimant argued that the word “efax” was a good trade mark as it carried connotations of fax and the internet but yet it was not part of the English language.
