Argos Ltd v Argos Systems Inc

Argos Ltd v Argos Systems Inc

Argos Limited's claims failed because (1) it consented to the display of its ads on Argos Systems Inc's website via Google AdWords terms; (2) Argos Systems Inc's website and use of the sign ARGOS were not targeted at the UK or used in relation to identical services; (3) there was no adverse effect on the functions of the trade mark, no relevant link or injury, and no unfair advantage or lack of due cause; (4) the own name defence and honest practices applied; and (5) there was no actionable misrepresentation or damage for passing off.

Parties
Claimant: Argos Limited; Defendant: Argos Systems Inc
Jurisdiction
England and Wales
Judgment Date
15 February 2017
Procedural Posture
Intellectual Property/trade Mark Infringement and Passing Off / Judgment After Full Trial
Outcome
Claim dismissed; counterclaim for declarations of non-infringement succeeds; indemnity claim dismissed.
Legal Topics
Trade Mark Infringement, Passing Off, Consent in Trade Mark Law, Targeting in Internet Law, Google Ad Words/ad Sense Liability, Own Name Defence, Due Cause, Unfair Advantage, Dilution, Jurisdiction and Targeting, Instrument of Fraud, Indemnity Clauses
Intellectual Property Trade Mark Law Passing Off Trade Mark Infringement Consent in Trade Mark Law Targeting in Internet Law Google Ad Words/ad Sense Liability Own Name Defence +6 more

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Parties

Argos Limited

Claimant

Argos Systems Inc

Defendant

Procedural Posture

Intellectual Property/trade Mark Infringement and Passing Off / Judgment After Full Trial

Legal Issues

  1. 1 Whether Argos Systems Inc's use of the domain name argos.com and display of Google AdSense ads infringed Argos Limited's EU trade marks under Articles 9(1)(a) and 9(1)(c) of the Community Trade Mark Regulation
  2. 2 Whether Argos Systems Inc's conduct amounted to passing off under UK law
  3. 3 Whether Argos Limited consented to the acts complained of via participation in Google AdWords

Ratio Decidendi

Argos Limited's claims failed because (1) it consented to the display of its ads on Argos Systems Inc's website via Google AdWords terms; (2) Argos Systems Inc's website and use of the sign ARGOS were not targeted at the UK or used in relation to identical services; (3) there was no adverse effect on the functions of the trade mark, no relevant link or injury, and no unfair advantage or lack of due cause; (4) the own name defence and honest practices applied; and (5) there was no actionable misrepresentation or damage for passing off.

Court Disposition

Claim dismissed; counterclaim for declarations of non-infringement succeeds; indemnity claim dismissed.

Orders

  • Argos Limited's claims for trade mark infringement and passing off are dismissed.
  • Declarations of non-infringement granted in favour of Argos Systems Inc.