In the US, 1-800-FLOWERS.COM is a leading provider of flowers and gifts and 1-800-FLOWERS is one of the country’s most recognised brands in that market. The numeric equivalent of the order number was 1-800 356 3977. In the UK, the holder of the equivalent free-phone number, 0800 356 3977, was a company called Phonenames.
The UK company objected to the application by 1-800 FLOWERS for a UK trade mark since Phonenames used the number for a franchised business of selling flowers. Originally, the trade mark registrar allowed the US company its trade mark. Phonenames challenged that decision in court and won, thereby rejecting 1-800 FLOWERS as a trade mark. The judge ruled that trade mark laws could not apply where a web site was not addressing the whole world but only a local clientele. He added:
"Although it was possible to access the US site from the UK and order flowers, the service was carried out wholly in New York. If the applicant had a reputation here it was goodwill in a US-based business. Anyone here who knew of '1-800 FLOWERS' would expect service under that mark to be carried out in the US. It by no means followed that anyone here knowing of the applicants or their US number would think that the use of the UK number was by the same or a connected enterprise."
The US company then appealed, without success.
The higher court held that the original judge was correct to reject the claim by 1-800 FLOWERS because its use of the mark, without having the UK 0800 number, “would inevitably lead to confusion, if not also deception.” He also doubted that the US company had the intention to use the mark in the UK.