Reed Solutions Plc -v- Reed Business Information Limited and Others

Originally published March 2004

In a disappointing judgment for Reed Solutions Plc, the Court of Appeal this month considered the use of metatags and internet search engine keywords in the context of trade mark infringement. It also provided guidance on the own name defence and identicality of marks and services and re-visited the application of the user principle in relation to damages for trade mark infringement and passing off.

Background

The appellants, Reed Business Information Limited, Reed Elsevier (UK) Limited and Total Jobs.com Limited ("RBI") are part of a large multi-national publishing company whose publications include large sections dedicated to job advertising. The respondent, Reed Solutions Plc, a well-known agency established in 1960 by Mr Alex Reed registered the trade mark "Reed" in 1986 in class 35 in relation to employment agency services. Both parties started to use the internet actively as a business tool in the mid to late 90's. RBI had never used "Reed" on its own, save as a keyword which caused a banner advertisement for the appellants to appear when users typed in "Reed" as a search term. RBI had used two logos incorporating the words "Reed Elsevier" and "Reed Business Information", and had used these composite names themselves, the latter as part of a copyright notice on its website and also in invisible form as a metatag. At first instance, Pumfrey J found there to be trade mark infringement (at least pursuant to section 10(2) of the Trade Marks Act 1994, implementing article 5(1)(b) of the EU Trade Marks Directive) and passing off. At a later application, Pumfrey J also held that damages could be awarded on the "user" basis - he stated this may apply in cases such as this where it was not possible to show actual loss of sales or diversion of business.

Outcome

The Court of Appeal overturned Pumfrey J's decision on all counts save on the question of infringement in relation to use of the logos, which was no longer in issue. Jacob LJ criticised the trial judge's approach to the question of trade mark infringement in that he failed to distinguish sufficiently between the requirements of section 10(1) and section 10(2). In doing so he provided useful comment on the question of when a sign should be considered to be identical to a registered mark (LTJ Diffusion-v- Sadas Vertbaudet case C-291/00). Jacob LJ agreed with the ECJ's assertion that the criteria for identity of trade mark and sign must be interpreted...