Reed Executive plc & Another v Reed Business Information Ltd & Others
Reference:  EWCA Civ 159
Court: Court of Appeal
Judge: Auld, Rix & Jacob LJJ
Date of judgment: 3 Mar 2004
Summary: Intellectual Property- Trade Marks - Company Name - Identical/Similar Marks - Use of Trade Marks as Metatags
Download: Download this judgment
Instructing Solicitors: Slaughter & May for the Claimants; Olswang for the Defendants
Reed Business Information, a publisher, appealed against a finding that it had infringed the Claimant employment agency’s registered trademark. The Claimant had registered the word ‘Reed’ in Class 35 for employment services in 1986 and advertised jobs on its website. The Defendant publisher in 1999 set up a jobs dedicated website at totaljobs.com. The Claimant contended that all versions of the website which used the word ‘Reed’ whether visibly or in metatag form amounted to trade mark infringement and passing off. The Defendants had never used the word ‘Reed’ alone but used it in logos and as part of the composite ‘Reed Elsevier’ and Reed Business Information. At first instance, it was held that there was trade mark infringement and there was no ‘own name’ defence available under s.10(2) of the Trade Marks Act 1994 except in relation to minor matters (invoices and use at a trade show). The Defendants appealed.
Whether the prohibition against identical reproduction of a mark covered only reproduction of that mark without addition or omission (ie. the word ‘Reed’ alone) or whether it could extend to reproduction of the mark where new signs were added (eg. Reed + word Elsevier). Whether the ‘own name’ defence applied to companies.
Allowing the appeal:
(1) There was no identity of mark under s.10(1) as the Defendants were using the composite words ‘Reed Elsevier’ and ‘Reed Business Information. The additional words would not go unnoticed by the average consumer. The criterion of identity of the sign under Art 5.1 of the Trade Mark Directive must be interpreted strictly. LTJ Diffusion v Sadas Vertbaudet Case C-291-1000 (Arthur et Felice) applied; (2) the Claimant had failed to show confusion; (3) The ‘own name’ defence was available to a company under the law of the UK, subject only to a reference on the issue to the ECJ. (4) the metatag use did not amount to trade mark infringement as causing a website to appear in a search result does not without more suggest a connection with another trader. Invisible use does not convey a message to anyone.
This is a further example of a case where, rather than looking to the provisions of the UK Trade Marks Act 1994, the Court of Appeal went directly to the wording of the Directive. The decision itself is interesting for two main reasons (1) re-iteration of the principle that as far as UK courts are concerned the own name defence is available for companies; and (2) the rejection of the argument that invisible metatag use is capable of amounting to trade mark infringement.