Reed Executive Plc & Ors v Reed Business Information Ltd & Ors

Reed Executive Plc & Ors v Reed Business Information Ltd & Ors

The Court of Appeal held that the use of 'Reed Business Information' and related terms by the appellants did not infringe the respondents' registered trade mark under Art.5(1)(a) as the signs and services were not identical, nor under Art.5(1)(b) as there was no likelihood of confusion except in relation to the use of logos and Version 1 of the website, which was not appealed. The services provided by totaljobs.com were not 'employment agency services' but job advertisement publishing. The own name defence under Art.6.1(a) was available to the appellants, and their conduct after Version 1 was in accordance with honest practices. Uses of 'Reed' in metatags, banners, and copyright notices...

Parties
Respondent/claimant: Reed Executive plc; Respondent/claimant: Reed Solutions plc; Appellant/defendant: Reed Business Information Ltd; Appellant/defendant: Reed Elsevier (UK) Ltd; Appellant/defendant: totaljobs.com Ltd
Jurisdiction
England and Wales
Judgment Date
03 March 2004
Procedural Posture
Civil Appeal / Appeal From High Court Judgment
Outcome
Appeal allowed in part; cross-appeal dismissed; findings of infringement and passing off limited to unappealed uses (logos and Version 1); no infringement or passing off for other uses; inquiry as to damages remitted to High Court; costs to be determined after further submissions.
Legal Topics
Trade Mark Infringement, Passing Off, Internet Law, Own Name Defence
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Internet Law Own Name Defence

Case Brief

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Parties

Reed Executive plc

Respondent/claimant

Reed Solutions plc

Respondent/claimant

Reed Business Information Ltd

Appellant/defendant

Reed Elsevier (UK) Ltd

Appellant/defendant

totaljobs.com Ltd

Appellant/defendant

Procedural Posture

Civil Appeal / Appeal From High Court Judgment

Legal Issues

  1. 1 Whether the use of 'Reed Business Information' and related terms by the appellants infringed the registered trade mark 'Reed' under Art.5(1)(a) or 5(1)(b) of the Trade Marks Directive and constituted passing off;
  2. 2 Whether the services provided by totaljobs.com amounted to 'employment agency services' within the meaning of the trade mark registration;
  3. 3 Whether the own name defence under Art.6.1(a) applies to the appellants' use;

Ratio Decidendi

The Court of Appeal held that the use of 'Reed Business Information' and related terms by the appellants did not infringe the respondents' registered trade mark under Art.5(1)(a) as the signs and services were not identical, nor under Art.5(1)(b) as there was no likelihood of confusion except in relation to the use of logos and Version 1 of the website, which was not appealed. The services provided by totaljobs.com were not 'employment agency services' but job advertisement publishing. The own name defence under Art.6.1(a) was available to the appellants, and their conduct after Version 1 was in accordance with honest practices. Uses of 'Reed' in metatags, banners, and copyright notices...

Court Disposition

Appeal allowed in part; cross-appeal dismissed; findings of infringement and passing off limited to unappealed uses (logos and Version 1); no infringement or passing off for other uses; inquiry as to damages remitted to High Court; costs to be determined after further submissions.

Orders

  • Appeal allowed to the extent set out in the judgment.
  • Inquiry as to damages limited to unappealed uses.