REED not infringed under strict identity test

In Reed Executive plc v Reed Business Information Ltd, the Court of Appeal has applied a strict identity test and held that the defendants' use of the name Reed on their website did not infringe the plaintiffs' REED mark. Considering the use of marks in metatags, the court implied that such invisible use could not amount to use of a sign in the course of trade.

Reed Business Information and Reed Elsevier, the publishers of a wide range of magazines and journals containing job advertisements, set up a website advertising job vacancies at 'totaljobs.com'. At first, the website contained a number of references to Reed in both its pages and metatags. The number of references was reduced in later versions. Reed Executive plc and Reed Solutions, who own the registered trademark REED for employment agency services, filed proceedings for trademark infringement and passing off. They run a business tool website at 'reed.co.uk'.

At first instance, the High Court ruled that all uses of the name Reed amounted to trademark infringement and passing off, including use in metatags and keyword sponsorship whereby a banner for 'totaljobs.com' appeared on the Yahoo! search results page following a search for the word 'Reed'. The defendants accepted the judgment in relation to the use of logos incorporating the name Reed on early versions of the site, but appealed against the other aspects of the decision.

Lord Justice Jacob allowed the appeal. Applying the European Court of Justice's (ECJ) judgment in ARTHUR ET FÉLICIE that identity of marks must be strictly interpreted (see ECJ interpretation of 'identical' narrows trademark owners' rights), Jacob decided that the addition of 'Elsevier' and 'Business Information' to 'Reed' took the use outside the scope of Section 10(1) of the UK Trademarks Act 1994. Jacob ruled that the defendants' activities were similar, but not identical to those of the plaintiffs (ie, employment agency services). This, Jacob found, brought the case within the scope of Section 10(2) of the Trademarks Act.

Jacob considered the principles derived from ECJ rulings in Sabel, Canon, Marca Mode and Lloyd applicable to Section 10(2) infringement. Jacob held that any comparison involves a "global assessment" of the likelihood of confusion as to the origin of the goods or services concerned, involving a consideration of the distinctiveness of the mark. Therefore, Jacob applied the test to each individual use appealed by the defendants:

• With regard to a copyright notice referring to Reed Business Information Ltd, Jacob held that it did not involve infringement or passing off - there was nothing to suggest a likelihood of confusion.
  
  
• With regard to keyword sponsorship of the term 'Reed', Jacob reversed the original finding of Justice Pumfrey and held that this did not involve infringement or passing off since there was no likelihood of confusion. Jacob did not accept that a search engine user searching on the name Reed would think there was a trade connection between a banner that did not itself refer to Reed and the trademark owner. He stated that web users know that "all sorts of banners appear when he or she does a search" and that searches produce "results with much rubbish thrown in".
  
  
• Jacob similarly found that no one is likely to be misled by use in metatags.

Tantalizingly, Jacob raised the possibility that the position in relation to sponsored search terms and use in metatags might have been different had the case been decided under Section 10(1), since there would be no requirement to prove a likelihood of confusion. However, he doubted whether the sign had been used in the course of trade - a requirement to find trademark infringement under that provision. Jacob suggested that invisible uses may not count as use at all for the purposes of the trademark legislation. Further, he suggested that uses read only by computers never convey a message to anyone and may not therefore count as a "sign".

Andrew Southam, DLA, London