October 30, 2018
The Court of Appeal upheld the High Court decision that Argos Systems Inc (ASI), a US company, had not infringed Argos Ltd (AUL) registered trade marks for displaying Google adverts for AUL on its website <www.argos.com>.
AUL is a well-known UK based consumer retailer which owns trade marks for the word ARGOS and the domain name <argos.co.uk>. ASI is an American company that trades in the US providing CAD software. Its trade is limited to the US and trades under the name ARGOS and owns the domain name <argos.com>.
ASI had placed Google AdSense advertising on its website since 2009, and AUL had also participated in Google ad programs, resulting in AUL’s adverts appearing on ASI’s website attracting UK visitors who intended to access AUL’s website at argos.co.uk. ASI received advertising revenue which it would not otherwise have done. AUL brought claims under Articles 9(1)(a) and 9(1)(c) of Regulation (EC) 207/2009 for trade mark infringement and passing off last year.
Article 9(1)(c) of the Regulation, states that the proprietor of a mark shall be entitled to prevent third parties from using any sign which is identical with, or similar to, the EU trade mark in relation to goods or services which are not similar to those for which the EU trade mark is registered, where the latter has a reputation in the EU and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.
These claims were dismissed by the High Court and the Court of Appeal upheld the appeal for a number of reasons including that ASI’s use of the mark did not give rise to a link between ASI’s mark and AUL’ s mark and also that ASI did not take unfair advantage of AUL’s mark. The Court of Appeal stated that ASI did not seek out the unwanted internet traffic which arrived at its website, and it had no power to prevent it.
This case highlights that not only are trade marks incredibly important, but that businesses should make sure that their brand names are registered as domain names too as early as possible to ensure that any issues of confusion with other businesses can be avoided.
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