The High Court found no basis to oppose The Zockoll Group Limited’s applications to register “800 FLOWERS” and “800 FLORISTS” for flowers and plants, and said it would propose orders enabling registration.
In a judgment delivered on 17 October 2006, O’Sullivan J. considered the company’s appeal from the Controller of Patents, Designs and Trade Marks’ refusal of the applications, and the opposing company’s challenges to other grounds that the Controller had rejected. The judge concluded that the appeal should succeed, while making clear that the orders still had to be framed.
The applications, made in November 1995 by the company under its former name, Phonenames Limited, covered natural and dried flowers, wreaths of natural flowers, flower bulbs and plants. 1-800–Flowers.com, Incorporated opposed them, arguing, among other things, that registration could cause confusion with its US flower business and that the applicant lacked the required connection with the goods.
The judge rejected the confusion argument. The opponent had evidence of orders from Ireland, but the numbers were too small to show that its mark was known to a substantial number of people in Ireland’s broad flower market. The court therefore found no basis to prohibit registration on confusion grounds under section 19 of the Trade Marks Act 1963.
On the trade connection issue, the company’s business involved obtaining telephone numbers linked to words, then licensing the numbers and associated marks through arrangements with operators. The judge accepted that it did not itself produce or directly sell flowers. However, the draft agreements provided for some quality control, and the company intended to use similar agreements in Ireland. O’Sullivan J. concluded, with hesitation, that arranging for callers to be connected to local flower providers could amount to dealing with flowers for the purpose of putting them on the market. The proposed marks therefore met the statutory definition of a trade mark.
The court also rejected arguments that the company’s intention to use the marks depended on recovering withdrawn telephone numbers, or that the applications were a tactic in its separate dispute with Telecom Éireann. It found the efforts to recover the numbers supported an intention to use them. The judge further rejected the claim that the applicant had applied to frustrate the opponent’s entry into Ireland, finding no clear evidence that expansion into this market was imminent in November 1995.
The judgment concludes that there was no basis for opposing registration of the terms as set out in its final paragraph. The judgment’s final paragraph spells the second mark “800 FLORIST”, while the application and earlier discussion use “800 FLORISTS”.