This 362 paragraph decision is a good source of discussion for a wide range of UK/EU trade mark law.
It does appear to have been an ‘epic fail’ for Argos Limited in trade mark law, who must have spent very large sums of money on this action (including 6 days in Court) in their aim to acquire the domain name argos.com.
The domain name argos.com is owned by a US company which specialises in the field of building information modelling software. The domain has been owned by them since January 1992, when most commercial organisations didn’t own any domain name or website. That position is now radically different and so lots of UK-based individuals guess this domain name belongs to Argos Limited and huge number of hits to the argos.com website are unintentional.
For a while, the owners of the argos.com website took advantage of this through the Google AdSense programme and Argos Limited tried to argue that this constituted trade mark infringement and passing off. Richard Spearman Q.C., sitting as a Deputy Judge of the Chancery Division did not accept this, ruling that:
- Argos Limited consented to use of the sign ARGOS in the domain name argos.com, through their participation in the Google AdWords programme.
- Neither the whole nor any sufficient part of the argos.com website was targeted at the UK, and accordingly the owner of the website was not using the sign ARGOS in the UK.
- The owners of the website argos.com did not use the sign ARGOS in relation to goods or services which are identical to those for which Argos Limited’s trade marks were registered.
- Use of the sign ARGOS by the owner of the argos.com website does not affect and is not liable to affect any of the functions of Argos Limited’s trade marks.
- Use of the sign ARGOS does not give rise to a link between the sign and Argos Limited’s marks in the mind of the average consumer.
- Use of the sign ARGOS does not give rise to (a) detriment to the distinctive character of Argos Limited’s marks, or (b) detriment to the repute of Argos Limited’s marks, or (c) unfair advantage being taken of the distinctive character or the repute of Argos Limited’s marks.
- Use of the sign ARGOS on the website argos.com was not without due cause.
- Use of the sign ARGOS as part of the argos.com domain name was (a) of the website owner’s own name and (b) in accordance with honest practices in commercial matters.
- Although Argos Limited has goodwill in the sign ARGOS, they had not established a material misrepresentation to the public, or damage or the likelihood of damage, or that the argos.com domain name is an instrument of fraud.
The fact that Argos Limited was prepared to go to such lengths in an attempt to control the domain name argos.com shows how important it is for SME companies to recognise the value of intangible assets like domain names and trade marks and to make proportionate and cost-effective use of the Intellectual Property regimes to protect themselves.
Article drafted by Cathy Ayers