The defendant company used the trade marks of the claimant on their web-site to attract visitors. However the trade marks themselves were not visible when the site was browsed, or when it was listed on the search engine.
Held: The use of a trade mark could be an infringement, but the section required the use to be visible to a visitor. There was equally no evidence of loss just because the site was listed on a search engine’s results. Since now the trade marks had been removed, any action would be limited now to one of damages, and no injunction was appropriate.
Mr Justice Pumfrey
Times 13-Jun-2002, Gazette 18-Jul-2002, [2003] RPC 12, [2002] EWHC 1015 (Ch)
Bailii
Trade Marks Act 1994 10
England and Wales
Citing:
See also – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 19-Dec-2002
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. . .
Cited by:
Appeal from – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
See also – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 19-Dec-2002
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. . .
See Also – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs.Com Ltd CA 14-Jul-2004
Walker v Wilshire still Good Law
After successfully appealing, the defendant claimant argued for a substantial part of its costs, saying that the defendant had unreasonably refused ADR. To pursue this, it now sought disclosure of the details of the without prejudice negotiations . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 October 2021; Ref: scu.174003
