Reported Trade Mark Cases for March 2004

31 March 2004

Katharine Stephens

Miguel Torres SA v Cantine Mezzacorona SCARL (Court of Appeal – LJJ Peter Gibson and Jacob, and Sir Martin Nourse) – 19 December 2003

The Court of Appeal upheld the first instance judgement of Neuberger J (26 March 2003) in rejecting an opposition to a trade mark under section 3(4) of the 1994 Act based on an allegation that use of the mark was prohibited by Council Regulation 2392/89 (now replaced by Regulation 493/99), laying down general rules for the description and presentation of wines and grape musts. The mark was for MEZZACORONA and Device in respect of wine, but the small Italian town of Mezzocorona (as it was now called) was not an allocated geographical unit under the Regulation. The Court held that the Regulation did not forbid the use of the mark as it was also a brand name complying with the conditions laid down in Article 40, the use of which, as “supplementary information”, was permitted by Article 11(2)(c) of the Regulation. The Court noted that its view was consistent with the case law of the ECJ in Case 81/01 Borie Manoux v INPI [2003] ETMR 29 in which the ECJ had held that:

“Article 40 of Council Regulation 2392/89 … is to be interpreted as not prohibiting the use of a trade mark which contains a geographical reference and is intended for use in connection which the sale of wine and is likely to give the false impression that the geographical reference is protected, unless there is a real risk that use of such a mark will misled consumers and, as a result, alter their economic behaviour. …”

The Court observed that had it held otherwise “a perfectly harmless brand name that has developed a valuable and established goodwill ... would be destroyed to no good purpose.”

(1) Reed Executive Plc, (2) Reed Solutions Plc v (1) Reed Business Information Ltd, (2) Reed Elsevier (UK) Ltd and (3) Ltd; (CA (LJJ Jacob; Rix and Auld); ewca Civ 159)(3.3.2004)  

Reed Executive plc and Reed Solution plc (together “Reed Employment”) were part of a well established employment agency. In 1986 Reed Employment registered the word "Reed" for "employment agency services included in Class 35". In 1995 they launched their website

Reed Business Information Ltd, Reed Elsevier (UK) Ltd and Ltd (together “RBI”) are part of a multinational publishing house. In 1999 RBI started to publish its titles on-line including their job advertisements. It later launched the website dedicated to job advertisements. Over time different versions of the website appeared containing different uses of the word “Reed”.

Reed Employment brought proceedings for trade mark infringement and passing off in relation to uses of “Reed” (i) within logos, (ii) in copyright notices, (iii) as metatags, and (iv) as keywords, on the website.

The Judge found all these uses to be both passing off and trade mark infringement. All of these findings were appealed by RBI, except the findings in relation to the use of “Reed” in the logos. RBI had ceased using the logos in 2000.

Identity of the sign and the trade mark

The first point considered by Jacob LJ (who gave judgment for the Court of Appeal) was whether the signs in question were identical to the registered mark. Due to concessions made by the Claimant the only issue to be considered was whether “Reed Business Information” was identical to “Reed”. Referring to the ECJ's decision in LTJ Diffusion v Sadas Vertabaudet he commented that the guidance given as to the meaning of “identity” was opaque, however the ECJ had recognised that an addition in a Defendant’s sign to a registered mark may take the case outside one of identity. He gave the example of the addition of “Harry” to “Potter”.

He held that the average consumer would recognise the additional words in this case as serving to differentiate the Defendants from Reeds (which he commented was a common surname) in general. He concluded that “Reed” was not identical to “Reed Business Information”.

Identity of services

In assessing whether the use complained of fell within the specification, Jacob LJ referred to his own decision in Avnet v Isoact [1998]. It was necessary to identify the core activity which would usually be provided by a supplier of the services referred to in the specification, in this case “employment agency services”.

He decided that the services provided by RBI were a searchable job advertisement site and no more.  They could not be described as an employment agency because employment agency services required vetting for suitability by the agency. This was not done by RBI.

He also decided that the time to determine the meaning of a specification was the date of registration rather than the date of the alleged infringement.

Article 5.1(b) – Likelihood of confusion

Having decided that there was no identity of marks or of services. Jacob LJ considered the applicable principles under Article 5.1(b) taking into account the ECJ's decisions in: Sabel v Puma, Lloyd Schuhfabrick v Klijsen, Marca Mode CV v Adidas .

Applying these to the use of “Reed Business Information” in the copyright notice

"(c) [year] Reed Business Information Ltd"

on the web page, he found that there was insufficient evidence to support a finding of likelihood of confusion.

Own name defence

Jacob LJ went on to consider the merits of RBI's own name defence in both passing off and trade mark infringement. Given his findings in relation to there being no passing off or trade mark infringement his comments were obita dicta, although he did indicate that following  Scandecor Development v Scandecor Marketing he thought the defence in the Trade Marks Act was available to companies.

The Yahoo banner

RBI had paid a search engine to link certain search terms to an advertising banner for the website. This was common practice amongst businesses operating on the Internet. The relevant terms (or keywords) chosen by RBI were "recruitment" and "jobs". Yahoo gave them a free extra term and Yahoo chose for them the term "reed".

Jacob LJ disagreed with the trial judge that the display of the banner when the search term, "reed", was entered amounted to trade mark infringement or passing off. He concluded that there was no likelihood of confusion. He held that

 the idea that a search under the name Reed would make anyone think there was a trade connection between a totaljobs banner making no reference to the word ”Reed" and Reed Employment is fanciful.  

Metatag use

At first instance it was held that the use by RBI of the metatag (a word on the website which can be read by search engines but not casual users) “Reed”, amounted to trade mark infringement and passing off.

As the use of the metatag was invisible to visitors, Jacob LJ held that there was no misrepresentation or likelihood of confusion. The fact the RBI site appeared higher on a list of search engine results would not in his view lead to confusion. 

In relation to both metatags and keywords he reserved his position as to whether this use amounted to use of a trade mark for the purpose of Article 5(1)(a).

Blue IP Inc and KCS Herr Voss UK Limited (High Court – Chancery Division – Hon Mr Justice Hart) – 29 January 2004

The facts of this case, which concern the rights to various trade marks which arise out of a series of corporate transactions, are complex but some of the findings have relevance to trade mark law, as in the special circumstances of this case an allegation of infringement was advanced on the basis of section 10(1) only of the 1994 and not section 10(2).  Applying the strict approach to identicality established in the ECJ decision in Case C-291/00 LCJ Diffusion SA v Sadas Vertbaudet SA the Judge found that “KCS Herr Voss” and “KCS Herr Voss Ltd” did not infringe the mark “Herr-Vos”. However the use of the email address and the use of a logo with “Herr Voss” in distinctive font and with distinctive colouring were each prima facie considered to infringe. The “own name” defence under section 11(2)(a) did not apply to these as “Herr-Voss” could not be said to the name of the Defendant KCS Herr Voss UK Limited.

Written by Katharine Stephens, Trevor Cook and Cristina Garrigues.