Joint Head of Intellectual Property and Dispute Resolution, Matthew Harris was recently interviewed by Bloomberg BNA about the English High Court’s judgment in Yoyo.email Ltd v Royal Bank of Scotland Group Plc & Ors [2015] EWHC 3509 regarding Yoyo.email’s registration of four domain names.
The interview was prompted by English court’s decision to strike out Yoyo.email’s attempted “appeal” against a 2014 Uniform Domain Name Dispute Resolution Policy (UDRP) decision in which the panel had held the domain names should be transferred to RBS. The court also found in favour of RBS’s counterclaim that by registering those domain names, Yoyo.email was liable to RBS under the English law of passing off.
Matthew told Bloomberg BNA that the High Court’s decision demonstrated that English courts, “are likely to take a robust stance in cases in which a domain name has been intentionally registered because it incorporates the trademark of another person.” He went on to highlight the importance of carefully considering the potential jurisdictional consequences of deciding to initiating proceeding under the URS (Uniform Rapid Suspension) or UDRP.
The current legal framework in the UK does not allow copying of copyright-protected material for training generative AI models, except where it is carried out with permission of the copyright owner or done in a research or study context and for purely non-commercial purposes.
This matter deals with the Claimant’s (‘TVIS’) allegation of infringement and misrepresentation in relation to its “VETSURE” trade mark by the Defendant (‘Howserv’s’) “PETSURE” trade mark, used for pet insurance. In the first instance decision, the claim was dismissed due to the marks being highly descriptive and “not…