Lakmal Walawage considers questions about trade marks and domain names following the Court of Appeal ruling in Argos Ltd v Argos Systems Inc, taking account of the impact online, internationally and programmatically
What’s in a Reputation?
If you are lucky enough to have a famous brand, for which you have a trade mark, the law in the UK and Europe usually affords you far greater protection than if you are lesser-known.
Due to their notoriety, would-be infringers try to seek out such big-brands to imitate more often, hoping to ride off the coat tails of the reputation those brands command. As such, there are provisions in both UK and European trade mark law (by way of Article 9(2)(c) of the EU Trade Mark Regulation) which provides protection for brands with a famous reputation.
Where an unauthorised third party uses a similar mark, and such use (1) causes damage to the reputation or the distinctive character (dilution) and/or (2) takes unfair advantage of the reputation in the trade mark, the Regulation and European case law deem that the trade mark owner must be compensated.
This is regardless of whether the third party uses the mark in relation to similar goods or services to the trade mark owner – as is the typical complaint of more ordinary trade mark litigation proceedings.
Brands with a certain level of repute (eg Apple), as such, find themselves capable of enforcing their trade marks more broadly than within their registered categories.
Such was the nature of the complaint brought by Argos Ltd, the UK high-street retail outlet against Argos Systems Inc. a small US-based software company based in Bedford, Massachusetts, which was recently resolved in the Court of Appeal (see Argos Ltd v Argos Systems Inc  EWCA Civ 2211).
Argos dropped allegations on infringement in an Article 9(1)(a) or (b) context, and appealed only in relation to reputation, in particular on the point of taking of unfair advantage.
A short reminder of the salient facts of this case are:
In the High Court, Argos UK alleged infringement under Article 9(1)(a) or (b) of the Regulation but, the trial judge rejected that ground, Argos UK appealed only in relation to reputation, in particular on the point of taking of unfair advantage. They had lost at first instance on that ground too.
Deputy Judge Spearman in the High Court (see  EWHC 231 (Ch)) decided that while an advantage may have been accrued by Argos Systems (namely, revenue from the AdSense impressions and clicks), this advantage was not necessarily unfair.
This decision was reached on several factual bases, including that Argos US had nothing to entice EU visitors to its website, and that the AdSense program signed up to by both parties was a commercially reasonable activity that benefited both.
The Appeal: A question of reputation and unfair advantage
In the appeal, primary argument of Argos UK in relation to unfair advantage was that the respondent had enjoyed an economic advantage by using AdSense adverts on their www.argos.com domain and that it necessarily followed that any advantage should be ‘unfair’.
This was derived from the unqualified principles of ‘unfair advantage’ as were set out in L’Oreal v Bellure (ie ‘advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly’).
LJ Floyd was careful not to criticise L’Oreal but stated that taking such a literal meaning from it would be to ignore the additional principles set out in Whirlpool Corp v Kenwood Ltd and Specsavers International Healthcare v Asda Stores Limited.
Both those later cases were decided on the basis that something more was required for an ‘unfair’ advantage, and that it mattered whether the use of the mark was ‘without due cause’.
He also pointed out that L’Oreal was a case where there was an ‘image transfer’, ie that the average consumer would see the defendant’s use of the mark. This is to be distinguished in cases such as the Argos situation or Interflora, for example, where, while there was unauthorised use of a trade mark, the end-user would not see such use or perceive it as trade mark use.
In that legal context, LJ Floyd decided to uphold the first instance judge’s findings. The respondent’s use of Argos UK’s trade mark (through the combination of its use of www.argos.com and the AdSense ads) was not ‘unfair’ due to the factual findings of the first instance judge.
Interestingly, LJ Floyd regarded the mere fact that Argos US were making money by using the www.argos.com domain name and subscribing to the Google AdSense program did not mean the conduct was deemed ‘unfair’.
The unsolicited traffic to Argos US’s website was causing major bandwidth issues for some time, and Argos US were not obliged to find the least damaging way to solve these problems. Indeed, they were entitled to profit from signing up to a normal commercial activity such as Google AdSense.
The decision seems to reinforce precedent such as Specsavers and Interflora. It also seems to make reasonable and practical sense.
If it was decided that the advantage taken was necessarily unfair, it would have meant a party in the same position (where they unknowingly and in a completely different territory operate a website at a domain name which uses all or part of an EU trade mark) would not be able to access the Google AdSense program as they would be liable to trade mark infringement on another continent if they did.
Lakmal Walawage is a solicitor with Virtuoso Legal, focusing on all aspects of contentious and non-contentious intellectual property work. Virtuoso acted for Argos Systems in the UK litigation: www.virtuosolegal.com