On 3rd March 2004, the Court of Appeal considered the question of whether the use of trade marks in meta tags and banner advertisements on websites constitutes trade mark infringement, as part of an appeal from a High Court decision of Mr Justice Pumfrey.
The appellants were Reed Business Information Limited, Reed Elsevier (UK) Limited and totaljobs.com Limited (RBI). RBI is a leading publisher and in 1999 developed the totaljobs.com website to exploit the job advertisement market.
Until June 2000, two logos appeared on totaljobs.com incorporating the words Reed Elsevier and Reed Business Information. However, after June 2000, the only visible reference to either Reed Elsevier or Reed Information on the site was the use of a copyright notice ‘© [year] Reed Business Information Ltd’ at the bottom of web pages on the site.
The words Reed Business Information, nevertheless, appeared in the meta tags of the totaljobs.com website in various forms, and until late 2000, RBI paid Yahoo to run a number of banner advertisements for the totaljobs.com website linked to the search terms ‘recruitment’ and ‘jobs’. Yahoo gave RBI a free extra search term of their own name, with Yahoo choosing the word ‘reed’.
The Respondents, Reed Executive plc and Reed Solutions plc, (Reed), is one of the UK's leading employment agencies and instituted proceedings for trade mark infringement against RBI for all forms of the use of the word REED, whether that was in visible form or in meta tag form, on the basis of a trade mark registration for employment agency services. Mr Justice Pumfrey found for Reed on all counts.
Although RBI did not appeal Pumfrey's decision on the visible use of Reed, RBI did appeal the decision with regards the use of Reed in the copyright notice, as a meta tag and the banner advert use. Article 5(1) of the Trade Marks Directive states:
‘The Registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) Any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) Any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.’
Following on from the European Court of Justice decision in LTJ Diffusion v Sadas Vertbaudet Case C-291/00 (‘Arthur’ and ‘Arthur et Felicie’), the Court of Appeal found the differences between the word Reed on the one hand, and Reed Business Information on the other would not ‘go unnoticed by the average consumer’ and thus identity between the marks had not been established under the Arthur test and the use of Reed did not fall under Article 5(1)(a).
In order to succeed in the trade mark infringement claim Reed would have to prove that use of the word ‘ Reed‘ by RBI would cause confusion under Article 5(1)(b).
Copyright Notice
No direct evidence was produced which indicated any confusion arising from the use of the copyright notice alone (i.e. without any other use of ‘Reed‘ on the website). It was held that it was a matter of pure speculation as to whether the copyright notice alone would cause confusion. A copyright notice was held not to be an explicit notice as to who owns a website.
Given that 'Reed' was not being used in a visible way on the totaljobs.com website apart from in the copyright notice at the very bottom of any webpage, which had to be scrolled down to view, it was felt unlikely that any confusion would result from the use of ‘Reed Business Information’ in the copyright notice alone.
Infringement was thus not found under this head.
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