A Tale of Boo Hoo for Wasabi Frog

The High Court has granted the online women’s fashion retailer “boohoo.com” an interim injunction to stop a competitor from using the trade mark or domain name “Miss Boo”.

The Facts – Wasabi Frog Ltd v Miss Boo Ltd and another [2009] EWHC 2767 (ch)

Wasabi Frog Ltd trading as “boohoo” and “boohoo.com” sold women’s fashion clothing, shoes and accessories online. The claimant traded through its website www.boohoo.com. The claimant owned community trade marks for the words BOOHOO, BOOHOO.COM and BOO, plus it owned the following domain names: www.boohoo.com,www.boohoo.co.uk, www.missboohoo.com, www.missboohoo.co.uk and www.missboohoo.eu, all of which re-directed customers to the boohoo.com website. The claimant’s target audience was women aged 17 to 30.

In September 2009, the first defendant, Miss Boo Limited, began an online women’s clothing shop. It used the trading names “Miss Boo” and “missboo.co.uk” and traded through the website www.missboo.co.uk. The defendant targeted the same audience as the claimant; it advertised in the same magazines; and it sold similar fashion items.

The claimant’s applied for an interim injunction, claiming trade mark infringement and passing off.

The Decision

The High Court granted an interim injunction to stop the defendants from trading under, or referring to the mark or domain names “Miss Boo” or “missboo.co.uk”. The court held that the claimant had a substantial reputation and goodwill in the marks boohoo and boo.com but not in boo. The judge held that the claimant has a strongly arguable case in trade mark infringement and well arguable case in passing off. The confusion could be created by the following:

Once aware of the defendant’s proposed business, the claimant had brought the words “Miss Boo” as Google AdWords, so if the words “Miss Boo” were entered into Google then the claimant’s ad for www.boohoo.com appeared.
The emphasis in the names “Miss Boo” and “boohoo” was on the word “boo”. A customer may be led into believing that “Miss Boo” was linked to the claimant.
The names Boohoo, Boohoo.com and Boo were relatively unusual and different within the retail sector. The distinct nature of the names increased the likelihood of confusion and association in the minds of consumers or trade.
The customer was likely to associate “Miss Boo” with “Boo”.

The court ruled that damages were be an inadequate remedy and that the claimant’s reputation could suffer irreparable harm, if as alleged by the claimant’s the goods were of lower quality. It was also likely that business which should go to the claimant would go to the defendant instead. The defendants could easily change its name on the website and get a new domain name.

Practice Points

The case highlights the important of showing some evidence of confusion if you are looking to get an interim injunction against another party. The Claimant’s purchase of “Miss Boo” as a Google AdWord could be a useful tool to help show the chance of confusion in a trade mark and domain name dispute.

If you have any questions relating to this article or any other trade mark or brand related issue, please contact any member of our Brand Guardianship team at brandguardianship@boyesturner.com or on +44 (0)118 952 7247.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the
accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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