Factual and Procedural Background
This opinion concerns partial appeals and cross-appeals from two judgments by Judge Pumfrey dated 20th May 2002 and 19th December 2002. The appellants are a group of companies collectively called "RBI," part of a multinational publishing group known as "Reed Elsevier." RBI publishes numerous magazines and journals containing job advertisements. The respondents, collectively referred to as "Reed Employment," operate a nationwide employment agency business dating back to 1960.
Reed Employment registered the trade mark "Reed" in 1986 for "Employment agency services" under Class 35. RBI launched an online jobs-related website, totaljobs.com, starting with an experimental version in 1999, which evolved through several iterations. The dispute concerns whether RBI's use of the word "Reed" on totaljobs.com infringes Reed Employment's registered trade mark and constitutes passing off.
Legal Issues Presented
- Whether the use of the word "Reed" by RBI on the totaljobs.com website constitutes trade mark infringement under Article 5(1)(a) or 5(1)(b) of the Trade Marks Directive.
- Whether RBI's services offered via totaljobs.com fall within the specification of "Employment agency services" for which the trade mark "Reed" is registered.
- The scope and applicability of the own name defence under Article 6(1) of the Directive.
- The extent of confusion or deception caused by various uses of "Reed" by RBI, including logos, copyright notices, metatags, and banner advertisements.
- The appropriate basis and scope for any inquiry as to damages and costs following findings of infringement and passing off.
Arguments of the Parties
Appellant's Arguments (RBI)
- The totaljobs.com website does not offer "Employment agency services" as defined by the trade mark registration but rather provides a publishing and searchable job advertisement platform.
- The composite terms "Reed Business Information" and "Reed Elsevier," used by RBI, are not identical to the registered trade mark "Reed" and therefore do not constitute infringement under Article 5(1)(a).
- The own name defence under Article 6(1) applies to RBI's use of its corporate name, including in copyright notices, provided such use is honest and does not cause significant confusion or unfair competition.
- There is insufficient evidence that the use of the copyright notice alone or metatags causes any likelihood of confusion or passing off.
- Damages should be assessed summarily due to the limited scope and impact of the alleged infringements.
Appellee's Arguments (Reed Employment)
- The totaljobs.com website constitutes an employment agency service by acting as a go-between for employers and candidates, thereby infringing the registered trade mark "Reed."
- The use of "Reed Business Information" is likely to cause confusion with Reed Employment's registered mark and business goodwill.
- The own name defence does not apply where use causes confusion or deception, even if unintentional.
- Use of the word "Reed" in metatags and banner advertisements contributes to infringement and passing off.
- Damages should be awarded on a "user" basis, compensating for the use of the sign even absent proof of lost sales.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| LTJ Diffusion v Sadas Vertbaudet (Case C-291/00) |
Definition of "identical sign" under Art. 5(1)(a) of the Directive; strict interpretation allowing minor insignificant differences. |
Used to determine that "Reed Business Information" is not identical to "Reed" due to the addition of qualifying words that change the overall impression. |
| Avnet v Isoact [1998] FSR 16 |
Principles of construction of service specifications in trade mark registrations. |
Applied to interpret "Employment agency services" narrowly, focusing on the core meaning rather than broad or vague interpretations. |
| BMW v Deenik (Case C-62/97) |
Identification of the defendant’s sign for comparison with the registered mark. |
Distinguished as not relevant for the identity question where additional words have trade mark significance. |
| Sabel v Puma (Case C-251/95) |
Factors for assessing likelihood of confusion under Art. 5(1)(b). |
Adopted as part of the global assessment test for similarity and likelihood of confusion. |
| Canon v MGM (Case C-39/97) |
Assessment of likelihood of confusion and the role of the average consumer. |
Incorporated into the court's framework for evaluating Art. 5(1)(b) infringement. |
| Lloyd Schuhfabrik Meyer v Klijsen Handel (Case C-342/97) |
Definition of the average consumer and global assessment of confusion. |
Used to explain the importance of the overall impression and consumer perception. |
| Marca Mode CV v Adidas AG (Case C-425/98) |
Clarification of the concept of "likelihood of association" and confusion. |
Referenced to emphasize that association alone is insufficient without deception. |
| Rodgers v Rodgers (1924) 41 RPC 277 |
Own name defence in passing off and its narrow scope. |
Applied to explain that using one's own name is no defence if it causes confusion or deception. |
| Scandecor Developments v Scandecor Marketing [2001] 2 CMLR 30 |
Availability of the own name defence to companies under Art. 6(1). |
Followed to hold that companies can rely on the own name defence subject to honest use. |
| Premier Luggage v Premier Company [2003] FSR 5 |
Trade mark use can be covered by the own name defence under Art. 6(1). |
Applied to confirm that use of a company name on product tags was within the defence. |
| Gerolsteiner Brunnen v Putsch (Case C-100/02) |
Scope of Art. 6(1) defence including use as a trade mark and the requirement of honest practices. |
Relied upon to hold that some confusion can be tolerated under the own name defence if use is honest and fair. |
| Spalding v Gamage (1915) 32 RPC 273 |
Liability for passing off even without fraudulent intent and the basis for damages. |
Referenced to support the view that innocent infringement still gives rise to liability and possible damages. |
| McDonalds v Burger King [1987] FSR 112 |
Criteria for ordering an inquiry as to damages after successful trade mark or passing off claims. |
Used to discuss the appropriateness of inquiries into damages in the present case. |
| Home Office v Lownds [2002] 1 WLR 2450 |
Costs assessment principles and proportionality under the Civil Procedure Rules. |
Referenced regarding potential re-assessment of costs in light of the appeal outcome. |
| Imperial Group v Philip Morris [1984] RPC 293 |
Limitations and cautions in opinion polls as evidence of confusion in passing off cases. |
Applied to caution against over-reliance on prompted survey evidence of confusion. |
Court's Reasoning and Analysis
The Court began by distinguishing between trade mark infringement under Article 5(1)(a) and 5(1)(b) of the Trade Marks Directive. It held that there was no identity of sign because the defendants used composite marks ("Reed Business Information" and "Reed Elsevier") rather than the registered mark "Reed" alone. The additional words were visually and conceptually significant and would not go unnoticed by the average consumer.
The Court then examined whether the services offered by RBI through totaljobs.com fell within the specification of "Employment agency services." After detailed analysis, including expert evidence and user surveys, the Court concluded that totaljobs.com was essentially a searchable job advertisement platform rather than an employment agency. The key elements of an employment agency—control over introductions between employer and job-seeker and a direct interest in successful matches—were absent.
Consequently, the Court found no identity of services and thus no infringement under Article 5(1)(a). All alleged infringements had to be assessed under Article 5(1)(b), which requires a likelihood of confusion.
The Court summarized the principles for assessing likelihood of confusion under Article 5(1)(b), relying on established ECJ jurisprudence. It emphasized the global assessment of all circumstances, the role of the average consumer, and the importance of the distinctiveness of the mark.
In applying these principles, the Court found that some confusion existed, particularly with Version 1 of totaljobs.com, which prominently displayed RBI logos and invited advertisers to contact "Reed Business Information." However, this confusion decreased substantially in later versions after logos were removed or reduced.
The Court found no direct evidence that the use of the copyright notice alone caused confusion or passing off. Similarly, invisible uses such as metatags and banner advertisements did not amount to infringement or passing off because they did not create a misleading impression of origin or cause deception.
The Court considered the own name defence under Article 6(1) and English passing off law. It held that a company can rely on the defence if it uses its own name honestly and without unfair competition. Some degree of confusion may be tolerated provided the use is fair and honest. RBI was found to have acted in accordance with honest practices after Version 1.
The Court rejected the estoppel argument that RBI was precluded from contesting confusion related to the logos because those findings were not appealed.
Regarding damages, the Court expressed concern about the scope and management of the inquiry. It recognized that damages could be assessed on a "user" basis but noted this approach might not always be appropriate. The Court emphasized the need for proportionality and effective case management in assessing damages and costs.
Holding and Implications
The Court allowed the appeal.
The Court held that:
- There was no identity of sign or services to support infringement under Article 5(1)(a).
- Infringement claims must be assessed under Article 5(1)(b), and only limited confusion was found, mainly in early versions of the website with logos.
- The own name defence under Article 6(1) applies to RBI's use of "Reed Business Information" provided use is honest and fair.
- Use of the copyright notice alone and invisible metatag or banner uses did not infringe or cause passing off.
- The inquiry as to damages should be carefully managed and limited in scope, reflecting the reduced ambit of infringement found.
The direct effect is to limit the scope of liability for RBI and to clarify the application of trade mark infringement and passing off principles to internet-based services and composite trade marks. No new precedent beyond the specific facts and application of existing principles was established.