High Court Rules On Use Of Google Adwords/Adsense And Trademark Infringement

UK retailer Argos Ltd has lost its claim for trademark infringement and passing off (in the High Court of England and Wales) against Argos Systems Inc, a U.S. software company, with respect to the domain name argos.com. Argos Ltd v. Argos Systems Inc, [2017] EWHC 231 (Ch), Feb. 15, 2017 (High Court of England and Wales).

Argos Ltd had claimed that Argos Systems was infringing its EU trademarks for ARGOS by allowing its argos.com domain to feature Google AdSense advertising. Argos Systems had registered its domain name in 1992 and Argos UK had registered the domain name argos.co.uk in 1996.

Argos UK did not argue against Argos Systems' use of argos.com as a website and for email to promote its software. Instead, it argued that the use of the domain name in conjunction with the advertisements amounted to trademark infringement and passing off. Argos Systems participated in Google's AdSense advertising program and Argos UK's ads were among those that appeared on Argos Systems' website. This meant that indirectly the money Argos UK paid to Google (as part of the Google AdWords program) was being received by Argos Systems, as the clicks on the ads were from Argos Systems' website.

In rejecting Argos UK's claims against Argos Systems, the High Court made two key rulings, which were that:

Argos UK had expressly and unequivocally consented to Argos Systems' use of the sign ARGOS in the domain name by agreeing to the Google AdWords terms of use. Argos UK did not need direct knowledge of where its advertisements were appearing; this knowledge was available via its advertising agency. In any event, Argos Systems had not targeted UK consumers, so the sign ARGOS was not used within the UK. The court took into account the fact that most of the UK visitors to argos.com had visited the website by mistake and had left the website almost instantly when they realized it was not Argos UK's...