Argos v Argos: Double Identity Surely?

This blog is part of our series following our successful landmark ruling in the matter of Argos Ltd v Argos Systems Inc. For our full review of the case and to see our full range of blog posts click here.

If a business has a trade mark which specifies certain goods or services and another business comes along and uses the same trade mark in relation to the same goods or services, it is usually pretty easy for the first business to stop the second.

For example, think of another business coming along and trying to sell televisions under the brand Argos.  This is what trade mark lawyers call “Double Identity” and such cases are usually open and shut.

In the recent case of Argos Limited (“Argos UK”) and Argos Systems Inc (“Argos US), there was no dispute that Argos US had used the Argos name (therefore an identical sign), but one of the (many) issues was whether Argos US had used the Argos name in relation to services which were identical.

In this part of the case, Argos UK relied upon its trade mark for the term ARGOS, which specified “advertising services”.  Argos UK argued that Argos US’s signing up to Google AdSense and displaying adverts of third parties on its website at Argos.com amounted to “advertising services”.  Think of a property owner placing a billboard on the side of its building for passers-by to see whatever the billboard was displaying from time to time.

Argos US’s legal team argued that Argos UK had failed to show that Argos US’s use of the term ARGOS was “in relation to” goods or services which were identical to “advertising services”.

In particular, Argos US’s “use” of the term ARGOS was merely in relation to CAD software and other unrelated services for the construction industry.  In addition, Argos US had never supplied “advertising services” as, even incorporation of Google Adverts on its website at argos.com did not amount to advertising services as Argos US played no role in the composition of ads placed.  That was Google’s job.

Deputy Judge Spearman preferred the submissions of Argos US’s legal team. In particular, he found that Argos US was “not an advertising company, and it is does not offer or provide any of the services which are typically provided by such a company”.   In addition, he did not consider “merely offering to display on a website ads which are both created by third parties and selected for placement on the website by third parties amounts to the substance or core of ‘advertising services’ within the meaning of Class 35”.

In conclusion, since the Deputy Judge found that Argos US’s use of the sign ARGOS was not in relation to identical services, Argos UK’s trade mark infringement claim failed in that respect. This decision is in line with previous case law in relation to the interpretation of “advertising services” (see HHJ Birss QC (as he then was) in Yell Ltd v Giboin [2011] EWPCC 009) and therefore should come as no surprise to trade mark holders.  However, it does show that the courts’ approach to interpretation of a trade mark specification can be narrower than expected by a trade mark owner.

Virtuoso Legal acted for the successful party, Argos Systems Inc in this matter. For our full review of the case click here.

For more information on this blog contact, Philip Partington on philip@virtuosolegal.com or 0207 412 8372 or 07983 124030.

 

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