What’s in a name?

It’s one of the first things to check when starting a company – is there another organisation using the same name, and if so, could they be considered as competitors to your business? The intricacies of trade mark infringement and passing off are complex, yet vital to grasp if you want to avoid lengthy, costly, and potentially damaging, court proceedings.

A case finding against you could see you paying damages and being required to change whatever aspects of your name overlapped with the original trade mark. This could result in the loss of your hard-won reputation, and having to start again in establishing a well-known brand.

These very arguments were discussed and scrutinised when the British retailer Argos Ltd (Argos UK) disputed the use of the domain www.argos.com by an American software company called Argos Systems Inc. In a case which exposed how the Internet has made trade boundaries increasingly blurred and also highlighted the importance of getting full control of your domain name, the UK-based catalogue retailer took on the US Company, which deals with providing Computer Aided Design systems for the design and construction of residential and commercial buildings. 

Whilst no direct conflict existed in the actual goods and services provided by the respective companies, there was strong evidence to suggest that many of those visiting www.argos.com were in fact from the UK or Republic of Ireland and were looking to purchase goods such as toys, kitchen appliances and jewellery.  Argos UK complained that Argos Systems Inc was taking advantage of this by displaying adverts on its home page that would appeal to UK customers.  These adverts had been placed there since 2009 by Google’s AdWords with the consent of Argos Systems Inc. Argos UK had also participated in Google advertising programmes and its own ads were among those that appeared on Argos Systems’ website.

After much debate, the claims of Argos UK were dismissed by the Court on a number of grounds:

1. When Argos UK agreed to the Google AdSense terms of use, they were in effect consenting to the use of the “ARGOS” name by the defendant
2. Because the defendant’s website was not targeting UK consumers, their ARGOS sign was not used within the UK
3. The ARGOS sign wasn’t associated with any identical or relatable goods or services to those offered by Argos UK
4. The defendant’s use of the ARGOS sign did not in any way adversely affect any functions of the Argos UK trade mark
5. There was no case established to show evidence of a link, detriment or unfair advantage gained by the defendant
6. ARGOS was used with due cause as it had traded from the www.argos.com website since 1992
7. The defendant could rely on the ‘own name defence’ meaning that it was their trading name and had been used in accordance with honest practices in commercial matters

What this shows is that apparent trade mark infringement based on a word or name is not necessarily a straightforward case, and some clear evidence of misrepresentation or material impact must be seen in order to uphold a claim. Furthermore, the acceptance of third party terms of use (such as Google AdSense) may unwittingly give consent to companies using the same name to continue to do so.

With so many aspects to consider in trade mark infringement cases, it really is an area for specialist support. If you think you have a case to pursue, get in touch with us at BPE to assess what grounds are most likely to succeed and if you’re just starting out, we can advise on how you can protect yourself from inadvertently infringing on existing trade marks.

These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.