Home ›
Disputes/Legal ›
Case Law ›
Index of cases ›
Reed v Reed
Parties
In the Court of Appeal, March 2004
Introduction
This was a trade mark dispute between two parties who had both been trading using the name "Reed" for many years. With the advent of the Internet, the businesses came into conflict over the "totaljobs.com" website operated by the Reed Elesvier/Reed Business Information group (RBI) which Reed Executive, an employment agency group, felt was offering jobs and infringing their trade marks in "Reed".
This case deals with the difficulties of different companies with similar names trading on the Internet, and what levels of similarity of names are needed for trade mark infringement.
The Parties
The Reed employment agency group grew from a business set up by a Mr Reed, and has become a large business with shops in many high streets. As part of this business they place applicants with employers. They had a trade mark in respect of "Employment agency services included in class 35" which they had been granted in 1986, before the advent of the web.
The Reed Elsevier group is a large publishing group which publishes New Scientist and a range of learned journals, particularly in science and law. As part of this, they carry in some of their publications advertisements from employers seeking staff. In the judgement (and this summary, they are referred to as "RBI").
The Background
RBI started the totaljobs.com website. This went through various versions, starting with on-line versions of its magazines (which included job ads) and then became a fully customised portal allowing searches of a database of job ads and email alerts. In the first version, the logos of Reed Elsevier and RBI appeared but thereafter the website appeared just as TotalJobs. RBI accepted that the use of the logos was trade mark infringement and the first instance judge made various findings of infringement.
The Judgement
In the appeal (external link) judgement, on behalf of the court, Jacob LJ (also see Euromarket, Phone4u.co.uk and 800-Flowers), set out the two infringement provisions at issue (using the numbering from the EC directive, not the UK version). These are the Article 5.1(a) exclusive rights in relation to identical marks on identical services, and Articles 5.1(b) rights in relation to identical or similar marks on identical or similar products where there "exists a likelihood of confusion on the part of the public".
Identical marks or services?
Clearly therefore there had to be a discussion about whether the marks were identical. The judge went into some detail in paragraphs 20 - 41 about what amounted to "identical" - it being clear that some minor changes could be disregarded. It was easily found that the logos were not identical to the word Reed. In relation to marks he made the point that adding common words together can make it distinctive - "one word can qualify another so as to change its impact, "Harry" qualifies "Potter" ... for instance". It was "Reed Business Information [Ltd]" that was the main dispute. The judge felt that the capitalised "Business Information" did help to distinguish it from just "Reed" (itself a common surname, unlike Klaus Kobec) so it was not identical.
If the mark was not identical, were the services identical? In paragraphs 42 - 76 the judge looked at this in some detail. The mark was registered for services "included in class 35" - but at the time of the application web-sides did not exist. Could the trade mark cover them? No, said the judge - the scope of the mark is limited to what it was at application. In any event, the judge was not sure that the nature of an "employment agency" had really changed over the years.
So was totaljobs.com an "employment agency"? No again, said the judge. After some analysis he said that an employment agency vetted out candidates who were unsuitable, on behalf of the employer. While totaljobs.com allowed candidates to search by various criteria, that did not make it an employment agency. Equally, there was no hint that totaljobs.com acted on behalf of the companies offering jobs - it was just a contractual partner, not a representative.
Similar marks or services?
So with no identical marks, and no identical services, 5.1(a) did not apply - but what about 5.1(b)? Looking at a series of decision in the European Court of Justice, the judge picked out various propositions to spot what tests were to be applied when working out whether marks and services were similar:
There was no evidence of actual public confusion, although test studies had shown that the use of RBI names, copyright statements and logos in the first versions could cause problems.
Own-name defence
Although the judge did not attach much importance to the "own name defence" he felt that he had to discuss it since the parties had.
Some versions of the site used Yahoo banner ads to market themselves, with the banner linked to keywords "recruitment", "job", and "reed". However, this last terms was chosen by Yahoo because Yahoo added the advertisers own name as a free keyword. The judge did not express a view as to whether use of "reed" as a hidden keyword amounted to "use in trade" (an essential part of trademark infringement) but he certainly did no feel that the banner ad itself was infringement (it did not visibly contain the word Reed). However, he did think that infringement could occur if people clicked on the banner.
Metatags
There were some technical issues with the way that this was pleaded and argued, but generally (paragraphs 144 to 150) the judge felt that the use of meta tags did not lead to confusion, might not be use in the course of trade and was not infringement.
Other
The judge then covered a number of other uses of the names, but dismissed them all as they were factual, and not likely to mislead.
Costs and Damages
The basis on which damages would be assessed was discussed. On costs, the judge noted that a settlement offer had been rejected and that the parties had spent £2.155M on costs between them already. Detailed arguments about who should pay were reserved to a later hearing, but the judge noted that:
(1) Reed Executive plc
(2) Reed Solutions plc
v
(1) Reed Business Information Ltd
(2) Reed Elsevier (UK) Ltd
(3) totaljobs.com Ltd
(2) Reed Solutions plc
v
(1) Reed Business Information Ltd
(2) Reed Elsevier (UK) Ltd
(3) totaljobs.com Ltd
In the Court of Appeal, March 2004
Introduction
This was a trade mark dispute between two parties who had both been trading using the name "Reed" for many years. With the advent of the Internet, the businesses came into conflict over the "totaljobs.com" website operated by the Reed Elesvier/Reed Business Information group (RBI) which Reed Executive, an employment agency group, felt was offering jobs and infringing their trade marks in "Reed".
This case deals with the difficulties of different companies with similar names trading on the Internet, and what levels of similarity of names are needed for trade mark infringement.
The Parties
The Reed employment agency group grew from a business set up by a Mr Reed, and has become a large business with shops in many high streets. As part of this business they place applicants with employers. They had a trade mark in respect of "Employment agency services included in class 35" which they had been granted in 1986, before the advent of the web.
The Reed Elsevier group is a large publishing group which publishes New Scientist and a range of learned journals, particularly in science and law. As part of this, they carry in some of their publications advertisements from employers seeking staff. In the judgement (and this summary, they are referred to as "RBI").
The Background
RBI started the totaljobs.com website. This went through various versions, starting with on-line versions of its magazines (which included job ads) and then became a fully customised portal allowing searches of a database of job ads and email alerts. In the first version, the logos of Reed Elsevier and RBI appeared but thereafter the website appeared just as TotalJobs. RBI accepted that the use of the logos was trade mark infringement and the first instance judge made various findings of infringement.
The Judgement
In the appeal (external link) judgement, on behalf of the court, Jacob LJ (also see Euromarket, Phone4u.co.uk and 800-Flowers), set out the two infringement provisions at issue (using the numbering from the EC directive, not the UK version). These are the Article 5.1(a) exclusive rights in relation to identical marks on identical services, and Articles 5.1(b) rights in relation to identical or similar marks on identical or similar products where there "exists a likelihood of confusion on the part of the public".
Identical marks or services?
Clearly therefore there had to be a discussion about whether the marks were identical. The judge went into some detail in paragraphs 20 - 41 about what amounted to "identical" - it being clear that some minor changes could be disregarded. It was easily found that the logos were not identical to the word Reed. In relation to marks he made the point that adding common words together can make it distinctive - "one word can qualify another so as to change its impact, "Harry" qualifies "Potter" ... for instance". It was "Reed Business Information [Ltd]" that was the main dispute. The judge felt that the capitalised "Business Information" did help to distinguish it from just "Reed" (itself a common surname, unlike Klaus Kobec) so it was not identical.
If the mark was not identical, were the services identical? In paragraphs 42 - 76 the judge looked at this in some detail. The mark was registered for services "included in class 35" - but at the time of the application web-sides did not exist. Could the trade mark cover them? No, said the judge - the scope of the mark is limited to what it was at application. In any event, the judge was not sure that the nature of an "employment agency" had really changed over the years.
So was totaljobs.com an "employment agency"? No again, said the judge. After some analysis he said that an employment agency vetted out candidates who were unsuitable, on behalf of the employer. While totaljobs.com allowed candidates to search by various criteria, that did not make it an employment agency. Equally, there was no hint that totaljobs.com acted on behalf of the companies offering jobs - it was just a contractual partner, not a representative.
Similar marks or services?
So with no identical marks, and no identical services, 5.1(a) did not apply - but what about 5.1(b)? Looking at a series of decision in the European Court of Justice, the judge picked out various propositions to spot what tests were to be applied when working out whether marks and services were similar:
- The comparison is not a simple test; it is a "global assessment of the likelihood of confusion" similar to passing off cases.
- The "ordinary consumer" is the benchmark.
- The mark is considered as a whole. All relevant similarities are compared.
- It is about confusion as to origin, and a "likelihood of association" is exactly the sort of confusion that matters.
- There is (counterintuitively) a greater likelihood of confusion with very distinctive marks .
- A mere association between the mark and the sign in the mind of the public is not enough, unless there is deception as to the source of the goods.
There was no evidence of actual public confusion, although test studies had shown that the use of RBI names, copyright statements and logos in the first versions could cause problems.
Own-name defence
Although the judge did not attach much importance to the "own name defence" he felt that he had to discuss it since the parties had.
- He pointed out that in goodwill it is settled that a lack of intent to deceive is no defence, particularly where it is known that deception has occurred. Accordingly there are plenty of cases where people have been prevented from using their own name in order to prevent passing off. In this case, the proven confusion was so low that it was not an issue.
- For registered marks, there is a wider protection for own-name trading, and so the question was whether a company could rely on it. The House of Lords had previously said that a company could, although Jacob LJ warned that there were exceptions. The 'own-name' defence can only be claimed where it is used 'honestly', and there was some discussion of where this requirement had come from and what it meant. In the end, the judge said that it meant that some confusion could be caused and the use could still be honest, where it did not amount to "unfair competition". In this case, the judge felt that RBI were being honest, although this could still lead to them paying damages.
Some versions of the site used Yahoo banner ads to market themselves, with the banner linked to keywords "recruitment", "job", and "reed". However, this last terms was chosen by Yahoo because Yahoo added the advertisers own name as a free keyword. The judge did not express a view as to whether use of "reed" as a hidden keyword amounted to "use in trade" (an essential part of trademark infringement) but he certainly did no feel that the banner ad itself was infringement (it did not visibly contain the word Reed). However, he did think that infringement could occur if people clicked on the banner.
Metatags
There were some technical issues with the way that this was pleaded and argued, but generally (paragraphs 144 to 150) the judge felt that the use of meta tags did not lead to confusion, might not be use in the course of trade and was not infringement.
Other
The judge then covered a number of other uses of the names, but dismissed them all as they were factual, and not likely to mislead.
Costs and Damages
The basis on which damages would be assessed was discussed. On costs, the judge noted that a settlement offer had been rejected and that the parties had spent £2.155M on costs between them already. Detailed arguments about who should pay were reserved to a later hearing, but the judge noted that:
- The case had proceeded even though the use of the word "Reed" by RBI had fallen away to almost nothing after the first two versions of the site; and
- RBI refuses a number of offers to go to mediation. There had been serious settlement negotiations, but the judge said "they are not the same as mediation. A good and tough mediator can bring about a sense of commercial reality to both sides which their own lawyers, however good, may not be able to convey. " and urged both parties to mediate even at this late stage.