WILLOUGHBY & PARTNERS
Intellectual Property Protection & Enforcement
21st April 1997
c/o 2 Kendall Place
London W1H 3AH
TESCO STORES LIMITED ("Tesco")
We act for Tesco in relation to the protection and enforcement of its intellectual property rights.
Tesco will be well known to you as one of Britain's leading food retailers with over 500 stores throughout England, Scotland and Wales
Tesco operates both through these stores and, more recently, has been offering goods and services through its internet site at URL "http://www.tesco.co.uk" ("Tesco's site"), in particular under the banner TESCO DIRECT. For your information, we attch at Enclosure 1copies of extracts from Tesco's site, taken on 17 and 18 April 1997
Our client operates a loyalty card scheme, called TESCO CLUBCARD. With over nine million cards now in issue, TESCO CLUBCARD has become the most popular loyalty card in the United Kingdom.
Tescos attention has recently been drawn to two internet URLs, "http://www.irational.com" and "http://www.irational.org", both of which point to the same web pages ("the offending site").
A WHOIS search with the Internic domain name registration organisation of "irational.org" revealed the details Irational Gallery Limited of 116 Shaftesbury Avenue, London W1V 7DJ.
A considerable number of images contained within the offending site are copies of works in which our client is beneficially entitled ("Tesco copyright works") and which our client has the exclusive right to reproduce. The unauthorised reproduction of Tescos copyright works, including storage by electronic means, constitutes infringement of copyright and is actionable.
We have advised our client that it would be able to obtain an injunction to restrain the unauthorised reproduction of Tesco's copyright works contained within the offending site and would be entitled to claim damages from you.
The URL "http://www.irational.org" contain the text "Supported by tesco " which hotlink a user to the URL
"http://www.irational.org/tm/terms/collection.html'. The user is then
requested to provide the last nine digits of their TESCO CLUBCARD number and is prompted to complete a more detailed form requesting certain personal details.
It appears that a number of users have already completed requests for certain information on this site (URL "http://www.irational.org/tm/tesco/PDF.html")
If a user bypasses these requests for information by clicking on a "TM" device
the user is confronted with a page of animated Gif files of : "spinning" TESCO devices.
The remainder of the offending site includes a considerable number of depictions of the TESCO CLUBCARD device, the TESCO device, the TESCO DIRECT device and the TESCO BAKERS FINEST device.
Anyone viewing the offending site is likely to be misled into thinking that your goods, services and/or business are in some way directly associated with, supported or sanctioned by Tesco, when this is not the case.
Tesco is extremely concerned at the inevitable confusion that will arise in the minds of the public that visit the offending site. Such deception and/or confusion is likely to result in substantial damage to Tesco's reputation and goodwill. Your activities therefore amount to passing off which entitles our client to take civil action seeking the appropriate injunction and damages.
In particular, Tesco is extremely concerned that a number of visitors to the offending site have provided personal confidential information under the apparent belief that this information is being requested directly by our client. We consider that this information has been obtained by deception.
Trade Mark Infringement
A number of pages within the offending site incorporate unauthorised use of signs identical or similar to Tesco's trade marks in relation to identical or similar goods or services to those for which Tesco's trademarks are registered and thus constitute trademark infringement.
A number of pages within the offending site incorporate unauthorised use of signs identical or similar to Tesco's trade marks in relation to goods or services which differ from those for which Tesco's trademarks are registered. We consider that the
use of those signs takes unfair advantage of or is otherwise detrimental to, the distinctive character or repute of Tesco's trademarks and as Tesco's trademarks have a reputation in the United Kingdom, such use also constitutes trademark infringement.
In particular :-
constitutes infringment of Tesco's trademark TESCO (word) registration number 1, 487, 964
http://www.irational.org/tm/tesco/catalogue.html constitutes infringment of Tesco's trademark TESCO (word) registration number 1, 487, 964
Tesco therefore requires that you provide an Undertaking in the form of the draft attached at Enclosure 5 by 28 April 1997
The practical consequences of this undertaking include, but are not limted to:-
If you do not provide us with a signed undertaking in the form of the draft attached at Enclosure 5 by 28 April 1997, Tesco will take all necessary steps to
protect its rights by commencing proceedings against you for passing off, trademark infringement and copyright infringement. These proceedings will seek an injunction, delivery up and/or destruction under oath, and monetary compensation. Tesco will in addition, seek to recover from you its legal costs incurred in such proceedings.
We look forward to hearing from you, in the meantime Tesco fully reserves its rights.
Willoughby & Partners
The Isis Building
193 Marsh Wall
London E14 9SG
Tel:+44 (0) 171 345 8888
Fax:+44 (0) 171 345 4555
DX42677 (Isle of Dogs)
(admitted in Hong Kong