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 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. The reason for this is that it is far more likely for would be infringers to attempt to ride off the coat tails of those famous brands, as they have the pull factor!
No one can dispute that Argos Limited is a brand with a reputation. As such, in the recently decided case of Argos Limited (“Argos UK”) v Argos Systems Inc (“Argos US”), Argos UK argued that Argos US had infringed its trade marks on the basis that Argos UK has a reputation in the ARGOS brand in the UK and that Argos US’s use of the term Argos caused a link in the mind of the average consumer. This allegedly was done without good reason by Argos US and caused detriment to the Argos UK brand.
In deciding the case, Deputy Judge Spearman foresically considered each of the allegations by Argos UK.
Firstly, whether there was a link created between Argos UK’s trade mark through Argos US’s use of their sign. In this respect, the evidence put forward by Argos UK centred on the repeat visitors that landed on Argos USA’s website at www.argos.com. They stated that the repeat visitors were evidence that Argos USA’s use of the ARGOS sign in the domain name and on the website created a link to their trade mark.
The judge rejected this allegation on the basis that it was not Argos US’s use of the ARGOS sign, or any other act by Argos US, that caused this link to be made by web users. Instead, any link arose from “pure supposition” on the part of those web users, who may have assumed that Argos UK owned the www.argos.com domain. Further, the Deputy Judge stated that the repeat visitors to the domain may have been due to their own “laziness or forgetfulness”.
The second issue Deputy Judge Spearman considered was whether there had been detriment to the (1) distinctive character, (2) reputation of Argos UK’s trade mark, and whether Argos US has taken “unfair advantage” of Argos UK’s trade mark.
In this respect, the Judge stated that he saw no reason why the presentation or contents of Argos US’s website would “affect consumer’s perception of the image and power of attraction”. Further, he said he did not believe that potential customers would decide later not to purchase Argos UK products after having arrived at Argos US’s website.
Further, the Judge also stated that Argos US had registered the ARGOS domain name legitimately back in 1992, without any intention to associate itself with Argos UK. As such, Argos US did not set out to procure internet traffic intended for Argos UK, instead users landed at Argos US’s website purely by mistake.
Finally, the Judge also stated that Argos US’s use of the domain name and display of AdSense advertising on its website, also benefitted Argos UK and any advantage gained by Argos US was not significant to the level required to say that it was “unfair”. As such, it was found that Argos US’s use of the ARGOS sign had not caused detriment to Argos UK’s trade mark.
The third issue for Deputy Judge Spearman was whether Argos US’s use of the ARGOS sign was “without due cause”. In this respect, the Deputy Judge stated that Argos US did not at any time set out to make use of the reputation that Argos UK’s trade mark had within the UK. They had merely sought to take advantage of another income stream on their website – namely through AdSense advertising – which is entirely legitimate.
The Judge described it as a commercial opportunity which “dropped into Argos US’s lap due to volume visits from UK consumers which Argos US had not induced them to make”. He also went on to state that he was “unable to accept that the breadth of Argos UK’s rights as trade mark proprietor is such as to require Argos US to give up that opportunity on pain of being held to have infringed those rights”.
Accordingly, Deputy Judge Spearman found in favour of Argos US and rejected Argos UK’s claims in relation to th this element of Argos UK’s claims.
Virtuoso Legal acted for the successful party, Argos Systems Inc in this matter.