MORE ON REED v REED

Today's ruling in Reed Executive plc and another v Reed Business Information Ltd and others is arguably by far the most important trade mark infringement decision from a British court this century. It is Lord Justice Jacob's first major foray into trade mark doctrine since his ascent to the Court of Appeal. It is the first appellate UK trade mark decision in which the technology of the internet is considered.

In Reed v Reed, Court of Appeal (Jacob, Auld and Rix LJJ), [2004] EWCA Civ 159 the claimant Reed registered the word REED as a trade mark for employment agency services in Class 35. It operated its own website, reed.co.uk. An unconnected business, Reed Business Information (RBI), ran a recruitment website .called totaljobs.com. RBI's website used a logo with the words "Reed Business Information" and the legend “Contact Reed Business Information if you would like to advertise your company’s job vacancies” as well as a copyright notce containing the word "Reed" in the copyright notice. In addition several words, including "Reed", were used as metatags leading to the totaljobs site. RBI used banner advertising on search engine home pages which, when clicked, gave access to the totaljobs site and which had the appearance of "fake" search results. Reed sued for trade mark infringement and passing off, arguing that RBI's activities amounted to a use of a sign identical or similar to their mark which was likely to lead to public confusion. RBI denied infringement and pleaded that they were using their own name under s. 11(2) of the Trade Marks Act 1994.

At trial, Mr Justice Pumfrey held for Reed on the trade mark infringement claim. In subsequent proceedings he ordered an enquiry into damages. RBI appealed, while Reed cross-appealed, to the Court of Appeal.

The Court of Appeal allowed the appeal against the trade mark infringement finding and dismissed Reed's cross-appeal on passing off. In summary, the Court's conclusions were as follows:

1. Since RBI never used the word “Reed” by itself but only in conjunction with other words or material, that use was not use of an “identical” mark under Directive 89/104, Art.5(1)(a)/Trade Marks Act 1994, s.10(1).

2. In RBI's name “Reed Business Information” the use of initial capitals for the words Business Information would convey the meaning that those words were part of a business name, not merely descriptors that could be disregarded in a mark-for-mark comparison. The words “Reed Business Information” might be similar to the REED trade mark, but were not identical to it.

3. RBI's services were not “employment agency services” but simply the advertising of jobs. The core activity of the former but not the latter was the vetting of suitable persons for employment.

4. In considering the likelihood of confusion between two marks, the public should be regarded as being sensitive to small differences between marks (such as common surnames) that have little distinctive character.

5. Third parties are under a duty not to infringe trade marks, but this does not mean that they must “take such steps as may be necessary to reduce that risk [i.e. of confusion] to zero”.

6. There was no direct evidence of confusion caused by RBI's use of the word “Reed” in their copyright notice, which was not in any event a use which “served a trade or promotional purpose”. Evidence drawn from consumer impressions of the website as a whole was “too thin” to lead to the conclusion that the use of the copyright notice caused such confusion, especially since one had to scroll down to the bottom of each page to find it.

7. The “own name” defence is extremely narrow in passing off law and has never actually succeeded. “Because the test is honesty, I do not see how any man who is in fact causing deception and knows that to be so can possibly have a defence to passing off” (Para. 112). The statutory “own name” defence under the Trade Marks Act 1994 is wider and applied even in respect of company names. Accordingly the “own name” defence was applicable in respect of the use of “Reed” in the copyright notice.

8. The “own name” defence will apply notwithstanding the fact that some consumer confusion may result from the fact that one’s own name is used (see Gerolsteiner Brunnen v Putsch, Case C-100/02, ECJ, 7 January 2004).

9. Since the banner referred only to “totaljobs” and not to “Reed”, the use of “Reed” as a reserved word for an internet search which threw up that banner was not a trade mark infringement, though no opinion was expressed as to whether such a use was a “use in the course of trade”. Users of the internet would know that searches triggered up fuzzy results with much rubbish thrown in and there was no reason why anyone should think there was any trade connection between Reed's business and a totaljobs banner which made no reference to it. The position would however have been different under Article 5(1)(a) if there were identity between the parties’ marks and services, since no confusion would then need to be established.

10. As for metatags, it could not be said that there was infringement since, even if the employment of a metatag fell within the scope of an infringing act, being a “trade mark use”, there would still be no confusion. As to “use” , it would be strange if the use of a trade mark as a metatag were sufficient use to enable that mark to withstand a revocation challenge on the basis of non-use if that were the sole use made of the mark. In addition, the “own name” defence might still apply.

11. The use by RBI of “Reed” on invoices, in press releases and in promotional materials did not infringe Reed's trade mark since no-one could or would be confused by it.

12. The issue of an enquiry into damages, where the quantum was likely to be obviously small, was a matter for case management by the trial judge rather than for the intervention of the Court of Appeal.

As if this wasn't enough, there were some notable obiter dicta from the learned judge. Apart from saying that UK judges had no basis for challenging the recent trade mark rulings of the European Court of Justice, Jacob LJ mused that “invisible use” of a trade mark may not be use at all for the purposes of current trade mark legislation. He also said: "I am by no means convinced that the ‘user’ principle automatically applies in trade mark or passing off cases, especially where the ‘mark’ concerned is not the sort of mark available for hire… For damages to be awarded on the user principle is close to saying there is no damage so some will be invented”.

The IPKat is still pondering what all this means. For one thing, Jacob LJ’s comments on damages on the user principle are pretty radical and require further serious consideration. Perhaps less radical is the court's position regarding the use of the REED trade mark on banners and as a metatag. Although it appears to be substantially out of step with European and US jurisprudence, it may be that the court has based its decision mainly on the lack of evidence to support a finding of confusion resulting from that use, rather than indicating that such use can never infringe.

Another Reed who litigates trade marks in the UK here
More Reeds here, here and here
Broken reeds here, here and here