Reed Executive Plc & Ors v Reed Business Information Ltd & Ors [2004] EWCA Civ 159 (03 March 2004)

Reed Executive Plc & Ors v Reed Business Information Ltd & Ors [2004] EWCA Civ 159 (03 March 2004)

The defendants' use of 'Reed Business Information' and similar signs was not identical to the registered mark 'Reed' and their services did not constitute 'employment agency services' as specified in the registration. The core of an employment agency service involves control over introductions and a direct interest in successful matches, which the defendants' website did not provide. Therefore, there was no infringement under s.10(1) (Art. 5(1)(a)). However, the services were similar and there was some likelihood of confusion under s.10(2) (Art. 5(1)(b)), but the use of the copyright notice alone was not likely to cause confusion. Passing off was not established for the uses under appeal.

Citation
[2004] EWCA Civ 159
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
Appeal (partial Appeals and Cross Appeals) From the High Court of Justice / Court of Appeal (civil Division) Judgment
Outcome
Appeal allowed in part; declarations and orders of the High Court varied to limit findings of infringement and passing off to specific uses (logos containing 'Reed') and not to the use of 'Reed Business Information' or the copyright notice alone.
Legal Topics
Trade Marks, Passing Off, Likelihood of Confusion, Specification of Services, Employment Agency Services, Internet Advertising
Intellectual Property Law Trade Marks Passing Off Likelihood of Confusion Specification of Services Employment Agency Services Internet Advertising

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

Appeal (partial Appeals and Cross Appeals) From the High Court of Justice / Court of Appeal (civil Division) Judgment

Legal Issues

  1. 1 Whether the use of 'Reed' or 'Reed Business Information' by the defendants infringed the claimants' registered trade mark under s.10(1) or s.10(2) of the Trade Marks Act 1994 (Art. 5(1)(a) or (b) of Directive 89/104)
  2. 2 Whether the defendants' services constituted 'employment agency services' within the meaning of the trade mark specification
  3. 3 Whether the use amounted to passing off

Ratio Decidendi

The defendants' use of 'Reed Business Information' and similar signs was not identical to the registered mark 'Reed' and their services did not constitute 'employment agency services' as specified in the registration. The core of an employment agency service involves control over introductions and a direct interest in successful matches, which the defendants' website did not provide. Therefore, there was no infringement under s.10(1) (Art. 5(1)(a)). However, the services were similar and there was some likelihood of confusion under s.10(2) (Art. 5(1)(b)), but the use of the copyright notice alone was not likely to cause confusion. Passing off was not established for the uses under appeal.

Court Disposition

Appeal allowed in part; declarations and orders of the High Court varied to limit findings of infringement and passing off to specific uses (logos containing 'Reed') and not to the use of 'Reed Business Information' or the copyright notice alone.

Orders

  • Declaration limited to infringement and passing off by use of logos containing 'Reed' on the totaljobs.com website home page, but not otherwise.
  • Claimants at liberty to apply for injunctive relief if needed in future.