This was an unsuccessful appeal by the UK consumer goods retailer, Argos Limited ("AUL") following the rejection of its claim for trade mark infringement and passing off in 2017.
Argos Systems Inc ("ASI") is a US corporation which sells construction software only in the USA, under the mark ARGOS.
AUL (who trade predominantly in the UK and Ireland under the same mark), brought a claim against ASI in 2017 for passing off and trade mark infringement, under Articles 9(1)(a) and 9(1)(c) of Community Trade Mark Regulation (207/2009) ("the Regulation"), concerning ASI's use of the mark ARGOS in its domain name – www.argos.com and on its website.
AIS 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 and attracting UK visitors who intended to access AUL's website at argos.co.uk.
The court dismissed the claims, citing a number of reasons, including;
- ASI's site was US based, so the sign had not been used in the UK, also the judge considered that the adverts on the US Argos site were clearly aimed at the US and not the UK
- The mark was not being used in relation to identical goods and services and did not adversely affect the function of AUL's trade marks.
- ASI could rely on an own name defence
AUL's appeal was based on Article 9(1)(c) of the Regulation, 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 Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community 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 Community trade mark.
The Court of Appeal upheld the trial judge's decision, finding the following;
- That ASI had not 'targeted' the AdSense ads on its website at users in the UK
- That ASI's use of the mark did not give rise to a link between the mark and AUL's mark
- ASI's use of the mark did not take unfair advantage of the mark
Importance for Clients
The decision and appeal shows that claimants need to show a material representation to the public (or fraudulent use of a domain) for a passing off claim to succeed. From a practical perspective, clients should ensure the following;
- They use the blocking feature on the AdWords program to exclude domains where they do not wish their adverts to appear
- That business names are registered as domain names as early as possible to ensure that issues with confusion with other businesses can be avoided
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.