Three members of chambers acted in a substantial trade mark infringement and passing off dispute between the British retailer, Argos Ltd (‘Argos UK’), and an American software company, Argos Systems Inc.
The claim concerned the defendant’s use of the sign ARGOS in its domain name www.argos.com and on its website, on which it had placed Google AdSense advertising since 2009. Argos UK also participated in Google advertising programmes and its own ads were among those that appeared on the defendant’s website.
The Court’s decision was the first since Interflora v Marks & Spencer to consider the position of Google keyword advertising which is hosted on third parties’ websites, and provides detailed guidance on issues of internet jurisdiction in trade mark cases.
The Court dismissed the claims for the following reasons:
- By agreeing to the Google AdSense terms of use, Argos UK had consented to the defendant’s use of ARGOS.
- In any case, the defendant’s website was not targeted at consumers in the UK so the sign ARGOS was not used within the UK.
- The defendant was not using the sign ARGOS in relation to identical goods or services.
- The defendant’s use of the sign ARGOS did not adversely affect any of the functions of Argos UK’s trade marks.
- No case of link, detriment, or unfair advantage could be established.
- The defendant’s use of ARGOS was with due cause, since it had traded from www.argos.com since 1992.
- The defendant could rely upon the own name defence.
- There was no material misrepresentation and therefore no passing off.
- The defendant’s domain name was not an instrument of fraud.
Jonathan Hill and Maxwell Keay acted for the claimant, Argos UK.
Jaani Riordan acted for the defendant, Argos Systems Inc.