Use Of A Trade Mark ‘Embedded’ In Computer System Is Not An Infringement

In RxWorks Limited v Dr Paul Hunter, the High Court has considered the four-part test for trade mark infringement laid down last year by the European Court of Justice in Céline Sàrl v Céline SA, on which we reported in our previous bulletin.

The defendant owned the UK trade mark VET.LOCAL, which was registered for computer software, hardware and firmware. The claimant developed and sold a computer system whereby the term "vet.local" appeared on computer screens, for example in searches or when opening computer files. The defendant threatened to sue the claimant for trade mark infringement over its use of the term vet.local; but the claimant then proceeded to sue the defendant for making unjustified threats of trade mark infringement, and sought summary judgment on the issues raised.