Intellectual Property Protection & Enforcement

21st April 1997
Our ref:sec.jdn.w.tes.014.2

c/o 2 Kendall Place
London W1H 3AH

Dear Sir


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.

Passing Off

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 :-

  • use of the TESCO devices at http://www.irational.org/tm/tesco/index.html
    constitutes infringment of Tesco's trademark TESCO (word) registration number 1, 487, 964

  • use of the TESCO direct device at
    constitutes infringment of Tesco's trademark TESCO (word) registration number 1, 487, 964

  • use of the TESCO BAKERS FINEST device at http://www.irational.org/tm/tesco/sale.html constitutes infringment of Tesco's trademark TESCO BAKERS FINEST(word) registration number 2, 106, 901


    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:-

  • removal of TESCO devices from

  • removal of the CLUBCARD device from

  • removal of the CLUBCARD devices from

  • removal of the CLUBCARD device and TESCO direct device
    from http://www.irational.org/tm/tesco/catalogue.html

  • removal of the TESCO BAKERS FINEST direct from

  • removal of the CLUBCARD device
    from http://www.irational.org/tm/story/stories.html

  • removal of the text "Supported by tesco" and the associated hotlink to
    http://www.irational.org/tm/terms/collection.html from


    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.

    Yours faithfully

    Willoughby & Partners


    The Isis Building

    Thames Quay

    193 Marsh Wall

    London E14 9SG

    Tel:+44 (0) 171 345 8888

    Fax:+44 (0) 171 345 4555

    DX42677 (Isle of Dogs)



    Peter Rouse

    Rupert Ross-Macdonald

    Stuart Adams

    Tony Willoughby

    Sarah Corbett


    Barbara Halliday

    (admitted in Hong Kong

    and Scotland)

    trina mould
    sainsbury & tesco