UK: Reed Solutions Plc -v- Reed Business Information Limited and Others

Last Updated: 22 April 2004
Article by Sarah Webb

Originally published March 2004

In a disappointing judgment for Reed Solutions Plc, the Court of Appeal this month considered the use of metatags and internet search engine keywords in the context of trade mark infringement. It also provided guidance on the own name defence and identicality of marks and services and re-visited the application of the user principle in relation to damages for trade mark infringement and passing off.


The appellants, Reed Business Information Limited, Reed Elsevier (UK) Limited and Total Limited ("RBI") are part of a large multi-national publishing company whose publications include large sections dedicated to job advertising. The respondent, Reed Solutions Plc, a well-known agency established in 1960 by Mr Alex Reed registered the trade mark "Reed" in 1986 in class 35 in relation to employment agency services. Both parties started to use the internet actively as a business tool in the mid to late 90’s. RBI had never used "Reed" on its own, save as a keyword which caused a banner advertisement for the appellants to appear when users typed in "Reed" as a search term. RBI had used two logos incorporating the words "Reed Elsevier" and "Reed Business Information", and had used these composite names themselves, the latter as part of a copyright notice on its website and also in invisible form as a metatag. At first instance, Pumfrey J found there to be trade mark infringement (at least pursuant to section 10(2) of the Trade Marks Act 1994, implementing article 5(1)(b) of the EU Trade Marks Directive) and passing off. At a later application, Pumfrey J also held that damages could be awarded on the "user" basis - he stated this may apply in cases such as this where it was not possible to show actual loss of sales or diversion of business.


The Court of Appeal overturned Pumfrey J’s decision on all counts save on the question of infringement in relation to use of the logos, which was no longer in issue. Jacob LJ criticised the trial judge’s approach to the question of trade mark infringement in that he failed to distinguish sufficiently between the requirements of section 10(1) and section 10(2). In doing so he provided useful comment on the question of when a sign should be considered to be identical to a registered mark (LTJ Diffusion-v- Sadas Vertbaudet case C-291/00). Jacob LJ agreed with the ECJ’s assertion that the criteria for identity of trade mark and sign must be interpreted strictly, although he criticised the marriage of this strict interpretation with the importation of the concept of imperfect recollection. He found no identity between "Reed" and any of the appellants’ signs (though he found them to be similar). Moving on to consider the construction of the specification of services, more guidance was provided; one must identify the core and unique features of the services in question, which, in this case, are selection and judgment. Adopting this approach, Jacob LJ concluded that the service of publishing job advertisements was not identical to employment agency services, though they were similar.

In considering section 10(2) he found there to be no likelihood of confusion based on the use of the Reed mark in the copyright notice or in the metatag or keyword. He also rather surprisingly suggested that use of a metatag is not necessarily use as a trade mark in the course of trade at all! However the key issue for the Court of Appeal was whether causing a site to appear as a result of use of a sign as a metatag or a keyword leads to a likelihood of confusion. Merely causing a site to appear by these means, without more, did not, in the appeal court’s view, lead to such confusion. In the absence of an actionable misrepresentatation, it was concluded that the claim for passing off also failed.

So far as the own name defence is concerned, the appeal court confirmed that this was available to a company, subject to any reference to the European Court of Justice. More importantly perhaps the Court of Appeal also held that use of one’s own name even as a trade mark can provide a defence provided there is no significant deception.

Finally, Jacob J questioned the application of the "user" principle (which has recently staged somewhat of a renaissance in the UK following the Eddie Irvine case) to calculating damages in trade mark or passing off cases, where the mark in question is not the sort of mark that is actually available for licensing.


This decision highlights just how different the approach of the UK courts on the question of invisible internet use now is to that of the courts in the United States where the doctrine of initial interest confusion applies. The Court of Appeal here found that the fact that the keywords in issue would lead to the appellants website did not mean that the surfer would think that there was a connection with the registered proprietor of the trade marks.

However it is arguable that a different judgment on infringement may have been reached if section 10(3) infringement (which does not require confusion) had been alleged. At first instance, Pumfrey J did perhaps attempt to import section 10(3) into his reasoning by focussing on his finding that the purpose of the metatag in question was to attract custom unfairly. However, Jacob L J, in his consideration of the issues surrounding section 10(2) argued that the purpose of the metagtag had no relevance here. Instead he reinforced the requirement for the existence of an actual likelihood of confusion. It seems clear that the UK courts are presently reluctant to broaden the scope of trade mark protection to cover "invisible" uses on the internet. In the absence of an ECJ decision on the issue, this Court of Appeal judgment means this is likely to remain the case for some time.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.