Do You Always Read the T’s and C’s? – Trade Mark Infringement and the Issue of Consent

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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.

There are a number of factors that are critical to establish when seeking to defend a trade mark infringement claim.

The issue of consent is one such issue: that the use of the sign that is complained of is without consent, is a condition of the claims under both Article 9(1) (a) (condition (iii)) and Article 9(1) (c) (condition (iv)).

The recent judgement in the matter of Argos Limited (“Argos UK”) v Argos Systems Inc (“Argos US”) gave particular treatment to the issue of consent. Key in this matter was the issue of consent with regards to the party’s use of the Google Adsense advertising platform. An advertising medium used by millions globally.

An important thing to note from the beginning is that this system requires two parties to function. Firstly there is the advertiser, who signs up to the Google Adwords terms and conditions, with a view to displaying their ads throughout the Google Display Network. Secondly there must be a website owner, who signs up to the Google Adsense terms and conditions, with a view to providing space on their website for Google to display advertisements. This case involved an advertiser, in this case Argos UK, seeking to complain about a website owner displaying Google Adsense advertisements.

In this case Argos US sought to rely on the defence of consent on the basis that the grant of rights given by Argos UK in the Adwords terms constitutes consent, for Article 9 purposes, to the display of Argos UK’s advertisements by Partners, including in this case Argos US, on websites which are selected by Google to form part of the AdSense programme. Put plainly someone on behalf of Argos UK had at some point ticked the box to accept the Google Adsense terms and conditions. These terms made it clear that by accepting them the advertiser consents to the display of their advertisements on websites that are part of the Google Display Network.

Argos UK sought to advance the argument that consent simply could not be given through their acceptance of the Adwords terms and conditions. It was their case that none of the Adwords terms could assist Argos US in establishing consent because those terms say nothing about use of the sign ARGOS in the domain name www.argos.com.

The Deputy Judge in this matter chose to deal with the issue of consent first due to the fact that it would dispose of the entire claim if Argos UK were found to have consented. The Deputy Judge having heard both parties submissions chose to approach this issue as a set of questions. He surmised that the correct questions are as follows;

Firstly whether, by the Adwords terms, Argos UK consented to the display by Argos US of Argos UK’s ads on Argos US’s website, in circumstances where that website had an existing lawful domain name (and home page) which used the sign ARGOS, such that – in the absence of some change in Argos US’s existing lawful use of the sign, which there was no reason for anyone to expect and which Argos UK did not suggest – the display of Argos UK’s ads would be accompanied by that use by Argos US of the sign; and:

Secondly whether Argos UK thereby consented to Argos US’s use of the sign ARGOS in that new or altered context.

The judge confirmed that on the facts of this case that he would give an affirmative answer to both of those questions and concluded that consent had been given.

Essentially deciding that in circumstances where ARGOS UK was unable to complain of ARGOS US’s use of the sign ARGOS in ARGOS US’s domain name (and home page) by itself, and where ARGOS UK consented to the display by ARGOS US of ARGOS UK’s ads on ARGOS US’s website (which was already lawfully using the sign in that way), ARGOS UK cannot complain of any breach of its rights which might otherwise have arisen from the combination of the continuation of that existing use and the display of those ads.

The key lesson here is to always be aware of the far reaching consequences that accepting online terms and conditions. In this matter the consent given by Argos UK through the acceptance of those terms and conditions proved fatal to their claim.

Virtuoso Legal acted for the successful party, Argos Systems Inc in this matter. For more information on this blog contact, Matthew Lingard on matthew@virtuosolegal.com or 01132379904.

 

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