Taylor Wessing v Corporate Registers, Court of Appeal - Nominet UK Dispute Resolution Service, March 30, 2006, [2006] DRS 3320

Resolution Date:March 30, 2006
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Taylor Wessing v Corporate Registers


Nominet UK Dispute Resolution Service

DRS 03320

Taylor Wessing v Corporate Registers

Decision of Independent Expert

  1. Parties

    Complainant: Taylor Wessing

    United Kingdom

    Respondent: Corporate Registers

    United Kingdom

  2. Domain Name


  3. Procedural Background

    On 24 January 2006, the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy hard copies of the Complaint were received in full on 26 January 2006.

    On 27 January 2006 Complaint documents were generated for service upon the Respondent. No response was received from the Respondent by the due date of 23 February 2006.

    On 28 February, Mr Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act.

    The Expert understands that the necessary fees were received from the Complainant on 24 February 2006. There are no interlocutory or interim matters outstanding. No communication has been received from the Respondent.

  4. Facts

    The factual background is summarised in the Complaint. There being no Response the Expert accepts the truth of the facts stated in the Complaint.

    The Complainant Taylor Wessing is a long established and well-known international law firm providing a full range of legal services to major corporations, institutions and private clients. It has offices in the United Kingdom, France, Germany, Belgium, Spain, UAE and China. There are currently over 200 partners with a total staff of 980.

    The firm was established as a result of a merger of two firms. These were Joynson-Hicks which was established in 1922 and Taylor Garrett which was founded in 1982. These firms merged to become Taylor Joynson Garrett in 1989. Between 1989 and September 2002 the firm traded under the name Taylor Joynson Garrett. In September 2002, the firm became known as Taylor Wessing through a combination of the practices of Taylor Joynson Garrett and a German law firm Wessing.

    The Complainant asserts that it has been recognised consistently since 1989 by its clients and the legal market as a pre-eminent law firm under the name Taylor Joynson Garrett and since 2002 under the name Taylor Wessing. It exhibits to the Complaint reviews and rankings in the legal directory ``The Legal 500''. It also exhibits at Annex 2 to the Complaint extensive publicity in the legal press including from the publication ``Legal Week''. Relevant articles include coverage of the firm's business under the mark Taylor Joynson Garrett, the merger of the Taylor Joynson Garrett and Wessing practices and recent news items.

    The firm uses a current website www.taylorwessing.com (a copy of which is exhibited as Annex 3). It also continues to operate the domain name ``taylorjoynsongarrett.com'' which links indirectly to the website www.taylorwessing.com. Archive copies of the Taylor Joynson Garrett website are annexed at Annex 4 to the Complaint. The Complainant submits that as a result of its extensive use of marketing under the name of Taylor Joynson Garrett since 1989 and its leading status in the legal market it has acquired a substantial reputation and goodwill in the mark Taylor Joynson Garrett in the United Kingdom and other countries. It submits that the mark is inherently distinctive and as a result of the fame it has acquired it is not descriptive of...

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