Reed employment wins trademark case against rival website

The Chancery Division of the UK High Court has found trademark infringement and passing off in a case where the name 'reed' was used on Reed Elsevier's website and in banner advertisements for the site. However, as the website and metatags associated with it had been changed by the time of the hearing, the complainant - the Reed employment agency - was not entitled to an injunction.

The claimant is part of the Reed employment agency group and owns the trademark REED for employment agency services. It has been involved in recruitment in the United Kingdom for over 40 years and owns 'reed.co.uk'.

The defendant, Reed Business Information Ltd, is part of the Reed Elsevier publishing group. It publishes trade publications which include job advertisements and owns 'totaljobs.com'. The word 'reed' initially appeared on the site as part of Reed Business Information's logo and as a metatag. By the time of the hearing, the name and metatags had been removed.

Initial research into the first version of the site held that there was possible misrepresentation in relation to a connection between the site and the claimant. Following this, the site was redesigned, removing both the Reed Business Information and Reed Elsevier logos, but still referring to the site as owned by Reed Business Information and including 'reed' as a metatag. The site used banner advertising extensively, but none referred explicitly to 'reed' and only the advertisements on Yahoo! used 'reed' as a trigger.

Consumer advertising for the second version of the site also used the Reed Business Information branding. Following further research which made it clear that there was still a risk of deception, all visible use of the REED mark was removed from the site and was replaced by reference to Totaljobs.com Limited.

Judge Pumfrey said that the proper approach when considering infringement is whether the defendant's sign differed from the claimant's mark only by additional matter which did not change the sign's identity, following the decision in Asprey & Garrard Limited v WRA (Guns) Ltd [2001] IP&T 1273.

The judge found there was trademark infringement under the Trademarks Act 1994, as a sign similar to a trademark had been used in relation to services which were similar to those for which the mark had been registered. As the site acted as an intermediary between clients and candidates, it was considered an employment agency. He also found that the claimant had established a substantial reputation associated with the mark REED in relation to job vacancies, and thus found passing off.

On the 'invisible use' of the name, including the metatags, the judge found that the concept of trademark use was wide enough to cover such invisible use if the name was then made visible in search results. Metatags involving the word 'reed' and banner ads triggered by the word 'reed' were both objectionable, although the mere presence of the site in a list of results would not be sufficient to prove loss.

As the site had been changed, there was no need for an injunction and no loss had been established. The claimant was entitled to costs.

Robyn Durie, Robyn Durie Consultants, London