Argos v Argos: Own Name Defence to Trade Mark Infringement

own name defence
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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.

It stands to reason that a person or business should not be stopped, pursuant to trade mark law, from using their own name.  If you are called John Smith, why should you be stopped from using your own name in relation to your business?  However, what if you wanted to sell beer?  Clearly, there has to an element of “honest practices” in order to prevent abuses.

And so there is both in the UK and in Europe.  In particular, a trade mark shall not entitle its owner to prohibit a third party from using, in the course of trade, his is own name or address, provided he uses them in accordance with honest practices in industrial or commercial matters. This includes both “natural person” (you and I) AND limited companies, for instance.

In the case of Argos Limited (“Argos UK”), the well-known UK giant retailer, brought a High Court claim against Argos Systems (“Argos US”) in relation to (amongst other things) trade mark infringement.  In defence, Argos US’s legal team relied upon the “own name” defence.

In order to be successful, Argos US was required to prove that its conduct was in accordance with honest practices in industrial and commercial matters reflects a general duty to act fairly in relation to the legitimate interests of the trade mark owner.  This required an overall assessment by the court, in light of all the relevant circumstances, of whether Argos US “can be regarded as unfairly competing with the proprietor of the trade mark”.

Argos UK’s legal team argued that the own name defence did not apply because, there was no evidence that Argos US did go by the trade name “Argos” alone, any use could not be said to be in accordance with honest practices and that Argos US’s use of the domain name argos.com was abusive.

Argos US’s legal team successfully argued that Argos US’s use of the term ARGOS was in accordance with honest practices for the following reasons:

  • Argos US adopted its name independently of Argos UK and without knowledge of it, in 1991, after its founder (who liked Greek mythology) read a history book. It did not take legal advice at the time of choosing the ARGOS name, but, even if it had, Argos UK’s trade marks were not in existence;
  • By the time Argos US found out about Argos UK’s business in late 2004, ASI had been trading for nearly 14 years and already possessed a substantial goodwill and reputation in America.
  • Argos US did not believe that Argos UK’s business would be impacted since the two companies operate on opposite sides of the globe and sell to different customers.
  • The only problem that Argos US anticipated was its own to deal with, namely the problem of “rogue” visitor traffic to argos.com.
  • There was no evidence of relevant actual confusion or any likelihood of it in future, so far as Argos US was aware. The 4 emails relied upon by Argos UK were not evidence of confusion at all.
  • As soon as Argos US was made aware of Argos UK’s objection, Argos US took steps to “blacklist” Argos UK’s domain names from appearing in ads, and Argos US then removed the ads entirely and reverted to its original pre-2008 trade on argos.com.
  • Argos US had been using the ARGOS name continuously since 1991 and the complaint was only made by Argos UK in May 2014, having been aware of the domain name for “many years”. Indeed, Argos UK did not initially see Argos US’s activity as a problem, but really wanted to purchase the valuable argos.com domain name, which Argos US refused.  Argos UK only pursued the legal complaint when these were rejected.

Deputy Judge Spearman relied upon the above reasons when he stated in his judgment that Argos US’s own name defence was made out.  As such, even if the other parts of the judgment had found that Argos US had infringed Argos UK’s trade marks, the own name defence would have provided Argos US a complete defence to infringement.

Virtuoso Legal acted for the successful party, Argos Systems Inc in this matter.

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

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