The essay is developed in relation to intellectual property (IP) rights and involves a copyright infringement of the word ‘REED’ by Reed Business Information (RBI). The essay will derive from ‘Reed Executive plc v Reed Business Information Ltd  RPC 40 at  per Jacob LJ,’ to provide legal advice on whether there was a trademark infringement in the reproduction of a mark new signs were added. According to the case, the plaintiff alleged trade mark infringement by the defendants by the use of the word ‘REED’ in a pop-up advert and also as metatags that led to their ‘Totaljobs’ site. There is a limitation in the own-name defense to trade mark infringement. Some confusion may be allowed if the overall competition between the two companies was not unfair. In this case, there was no confusion intended as the RBI only wanted to associate their own name with their Totaljobs website. When the confusion was discovered, RBI devised a strategy to minimize the confusion. The pop-up advert did not display the mark infringed, and therefore, there was no likelihood of confusion. The notion of honest practices in an advertisement is objective. Therefore, the judge failed to properly distinguish between articles 51(a) and 51(b) of the 1994 Trade Marks Act in deciding the case. As a result, an appeal was allowed, which was ruled in favor of the defendants; there was no copyright infringement based on honest practices.
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Trademark infringement refers to the unauthorized use of trade mark or service mark on or in connection to a service or goods in a way that is likely to result in confusion, deception, or a mistake when it comes to the source of the goods or service in question. In the United Kingdom, a trade mark is infringed by the unauthorized use of a similar or confusingly identical trade mark in relation to identical goods or similar services to those covered by the trade mark registration. In the United Kingdom, a trade mark is infringed when:
In the event that an unauthorized third party uses a mark that is perceived to be identical to a registered trade mark on similar goods and services offered by the party in question, then that person has infringed the Trade Mark Act of 1994. Every design has to be original before registering it as a trade mark. Based on this, if a company wishes to register a trade mark, they will have to come up with a design or mark that is unique and then conduct research to verify if the mark has been used by other companies to maintain its originality. For a trade mark infringement, a mark or design can be considered identical in the event that the original design has been altered or even if there are minor modifications made to the original design since the alterations may be unnoticed by the average consumer. Therefore, it is important for a company to come up with an original design before registering it as a trade mark to minimizes cases of infringement.
Also, a trade mark infringement may arise in the event that an unauthorized third party uses an identical registered trade mark on identical goods and services with the intention of causing confusion to the consumers as to the origin of the goods and services in the market. In this case, a company may try to copy another organization copying the products or services and offering or repackaging them in an identical manner as those provided by the original company. By doing this, the new company will not only have infringed the trade mark of the original company, but at the same time, it will have destroyed the image of the original company, especially if the products and services provided are substandard. To protect its image, the original company will have to sue the new company for infringement, as it will help safeguard its image as well as its finances as its sale will not be affected.
Trade mark infringement may also occur if a third party uses a similar or identical trade mark on goods and services which are not similar such that it takes unfair advantage or damages the reputation of the original trade mark. A company may be involved in the production of non-identical goods or services but at the same time use a different trade mark when it comes to packaging and advertising, with the intention of making consumers think that the company is an extension or a branch of the original company. In this case, the new company will be operating in deception as the consumers will be forced to believe and trust a company that has completely no relation to the original company.
Grounds for Trade Mark Refusal
A trade mark is a crucial component to a company as it dictates its sales based on its brand name. As a result, a company can register a trade mark, which accords the owner a negative right to prevent third parties from using or registering an identical trade mark. However, this does not give the company an absolute right as it is subject to the exception of ‘fair use.’ The doctrine of fair use can be used by the defendant against claims of infringement of a registered trade mark based on the following:
The use of the trade mark is in accordance with honest practices in commercial matters; that is, bona fide use. In this case, the defendant should not have used the trade mark in a malicious manner or in a way that tends to damage the reputation of the original company, and thus, it does not affect the company’s financial income from the sales of its goods and services.
The defendant does not use the trade mark in such a manner that indicates to take unfair advantage of the original holder of the trade mark. Also, the use of the trade mark is not detrimental to the distinctive character or reputation of the trade mark in question. In this case, the defendant has to make sure that the use of the trade mark adds value to it rather than use it to destroy the brand. Any actions that are deemed to be in favor of the trade mark can be considered fair use and, thus, do not amount to trade mark infringement.
The doctrine of fair use in regard to the trade mark by any other party other than the original owner can be categorized into two descriptive fair use and nominative fair use.
Descriptive fair use of a trade mark The category relates to the use of a registered trade mark in a descriptive manner that has been used in relation to goods or services, indicating the kind, quality, quantity as well as the intended purpose of the trade mark. Also, the trade mark should indicate the geographical origin, value, and the time of production of the goods and services.
Nominative fair use of trade mark The category relates to the use of a registered trade mark by a company in regards to the goods adapted to form part of or to be accessories, provided that it is reasonably necessary to indicate that the goods so adapted are compatible with those sold under the trade mark. Based on this, the nominative fair use of the trade mark applies to news, parody, criticism, commentary, comparative advertising, as well as any other form of non-commercial use of a registered trade mark. The nominative fair use can be problematic to the original owner of the trade mark as another party can utilize their trade mark without their consent in the production of goods and services.
Trade Mark Infringement as a Source of Confusion
Trade marks play an important role in business as they help in brand identification. In the event of a trade mark infringement, there may be confusion, and this becomes the basis for which a company can be sued. However, the plaintiff must prove beyond reasonable doubt that the infringement has resulted in double identity, thus resulting in confusion. Section 5(1) of the 1994 Act and Article 8(1)(a) CTMR provides that a trade mark shall not be registered if it is identical to an earlier trade mark, and therefore, an infringement has to violate the two acts and should illustrate the likelihood of confusion to the public as a result of similarities. In this case, there are various issues that must be considered to prove that the infringement of the trade mark has resulted in confusion:
The standpoint of interpretation (who must be confused) Confusion of a trade mark can only happen from a consumer’s perspective after comparing the marks used in their entirety. Based on this, confusion can not be proposed by the company as they are not involved in the consumption of the products. This concept has been highlighted in the Sabel v. Puma case, in which the Court of Justice observed that the average consumer of the particular goods and services in question play a decisive role in appreciating the likelihood of confusion. The average consumer of the products tends to be well informed and observant in regard to the kinds of goods and services they consume, and therefore, there is no confusion if a minority of the consumers get confused. In the case involving Reed Executive Plc and Reed Business Information, there is no indication that customers reported confusion to Reed Executive Plc, and this means that the basis of confusion based on the standpoint of the consumers was not valid, and neither was it reported. Thus, based on this standpoint, it can be assumed that the perceived confusion came from Reed Executive Plc, which, based on Sabel v. Puma case, is invalid.
Which public are confused? On some occasions, the potential markets for the trade mark holder and opponent’s goods or services tend to overlap, but there are occasions in which both share a niche in marketing. As a result of this, the question as to which applicant’s market or opponent’s market, or both are confused, arises. For an infringement case to be successful, the claimant has to illustrate beyond reasonable doubt who among their consumers have been affected in confusion, and it must definitely be their consumers who have reported to have been confused by the marks. In the case of Reed Executive Plc v. Reed Business Information, the two companies deal with job online advertisement, and this means that their services have quite some niches. However, the company is not aware of what consumers have been affected by the confusion, as none of the companies have received complaints of being misled by the opponent. Therefore, it is not clear which side of the consumers was affected, and thus, the claim of confusion does not hold up.
About what must the consumers be confused? According to Section 5(1) of the 1994 Act and Article 8(1)(a) CTMR, it is important to consider what is meant by the phrase, ‘likelihood of confusion,’ which in this case it involves confusion regarding the source or origin of the goods in question. Based on this, it implies that the consumers must be confused about the manufacturer, designer, or the supplier of the products or services in question, which is referred to as classic confusion. In this case, the consumers believe that the goods or services are provided by a single organization, but in the real sense, they are produced by different organizations which are independent entities. In the case of Reeds Executive Plc v. Reeds Business Information, both provide services that include job advertisements from potential clients, and this means that none of them is contacted by clients who would like to work with them. Again, their websites are different from that associated with Reeds Executive Plc being – reeds.co.uk, while that associated with Reeds Business Information being totaljobs.com; and this means that the clients cannot be confused as to who they are contacting to have their jobs advertised. The two websites are uniquely different, and thus, there is no incidence of classic confusion.
How much confusion has resulted from the double identity? In the law of passing off, it is essential that the complainant illustrate the deception of a substantial proportion of the customers. However, the European trade mark laws suggest that the number of real people who are confused is not relevant. According to these laws, the important question would be whether the notional consumer would be confused, implying that in some cases, the law would acknowledge only a single view of the impact of one sign on another. In this case, the number of people who have reported the confusion does not matter, and this gives the complainant a higher advantage in claiming infringement. Based on the case of Reeds Executive Plc v. Reeds Business Information, the number of confused consumers is not known, but according to the European laws, this does not matter as long as the aspect of confusion does exist. However, the law of passing off, in which Reeds Business Information was sued for violating, indicates that the claimant has to show that the deception affected a substantial number of consumers. However, a close look at the case indicates that there were no reports of confusion from the consumers, and this means that the claim of passing off does not hold.
Is ‘mere association’ a confusion In many cases, the reason for suing another company for trade mark infringement is because of the mere association which makes the two companies, both the claimant and the opponent, be associated as one; this leads to confusion. According to Section 5(2) of the 1994 Act, the likelihood of confusion in the trade mark includes the likelihood of association with the original trade mark holder. In the case of Reeds Executive Plc v. Reeds Business Information, the idea of an association between the two companies is just a mere association as only the word ‘Reed’ has been shared among the two. The rest of the wording is different; for example, in Reeds Executive Plc, the wording is different from Reeds Business Information. With the rest of the wording being different, it indicates that the only association involved in the two companies is only associated with the word ‘REEDS.’ Based on Section 5(2) of the 1994 Act, it can therefore be considered that the two companies cannot be confused, and the relationship between them is a mere association which does not count as infringement and thus doesn’t lead to confusion.
Initial interest confusion The category investigates whether there is a likelihood of confusion, and if it does, does it include the initial interest confusion. The initial confusion includes the engendered confusion prior to a particular commercial transaction, but which comes to be rectified by the time of transaction. An example of initial interest may include a case in which a McDonald’s driver erects a sign on the roadside, indicating that their products are available in his mobile shop. However, after the driver leaves, it becomes evident that the sustenance of the products can only be found at ‘Sherman Caf,’ an opposite caf situated opposite the mobile shop. In this case, some people will stay and try the products from ‘Sherman Caf,’ and they will not at any point assume that there is any connection of ‘Sherman Caf’s’ products with McDonald’s despite the initial interest being McDonald’s, but ended up in ‘Sherman Caf.’ In the case of Reeds Executive Plc v. Reeds Business Information, the two companies dealt with the job advertisement and may be likened to the example above. In the same way, consumers found themselves trying similar products offered by McDonald’s in ‘Sherman Caf’ without making any connection, it is the same way that consumers of Reeds Executive Plc found themselves requesting for services from Reeds Business Information company without making any connection. The consumers are aware that Reeds Executive Plc is a different entity from Reeds Business Information despite offering similar services. Therefore, there existed no initial interest confusion in the case of Reeds Executive Plc v. Reeds Business Information.
Analysis of the Reed Executive plc v Reed Business Information Ltd Case
In the case, ‘Reed Executive plc v Reed Business Information Ltd,’ the plaintiff, Reed, had registered the word REED as a trade mark for their employment agency services in class 35 for employment services in 1986. Reed Executive Plc operated its own website named reed.co.uk, which they used to advertise jobs, and this means that REED was the brand for the company. In 1999, an unconnected business named Reed Business Information (RBI) was formed and established a job-dedicated website named ‘totaljob.com’ to serve their customers. Reeds Business Information developed a logo that included the name “Reeds Business Information,” and this logo was used on its website. Also, the company used the legend “Contact Reed Business Information if you would like to advertise your company’s job vacancies.” In addition, in the copyright notice, the company included a copyright notice containing the word ‘Reed.’
The case also indicates that RBI used several words, including ‘Reed,’ which had been used as metatags that led to the company’s website. Further information provided in the case indicates that RBI used banner advertising on search engine home pages which gave access to the totaljobs.com site when clicked. However, the search engine home pages manifested with the appearance of ‘fake’ search results, implying that the site was not original. As a result of this, Reed Executive Plc sued RBI for trade mark infringement and passing off. Reed Executive Plc argued that RBI’s activities amounted to the use of a sign similar or identical to the company’s mark, and this was likely to lead to confusion to the public and, most specifically, its consumers. Despite these claims, RBI denied a trade mark infringement, and as a defense, the company claimed that they were using their own name, ‘Reed,’ as stipulated under section 11(2) of the Trade Marks Act 1994.
Justification For Trade Mark Infringement Refusal in Reeds Executive Plc v. Reeds Business Information
After the first ruling, the judge did not consider the aspect of confusion due to double identity as illustrated in Section 5(1) of the 1994 Act and Article 8(10)(a) CTMR. Also, the judge used an objective perspective in assessing the honest use of the word ‘REEDS,’ and this means that the ruling was biased. In the appeal case, the trade mark infringement was refused based on the following grounds:
The main issues in the case were whether the infringement of a mark covered only the reproduction of the mark in question without any addition or omission, which in this case ‘REEDS’ alone, or whether the infringement extended to the reproduction of a mark where new marks were added such as “REEDS + BUSINESS INFORMATION.” Whether the ‘own name’ defense could be used by both companies since RBI used ‘REED’ as an ‘own name.’ Reed Business Information did not use the word ‘REEDS’ alone, but along with other words to make their trade mark. Based on this, the use of the word ‘REEDS’ does not amount in any way to be identical, and therefore, does not violate Directive 89/104/EEC and Section 10(1) of the Trade Marks Act. In this case, the mark used by RBI was not similar in any way as it included other words that made the mark distinct, and therefore, does not indicate any signs of confusion to the customers.
To discredit further the assumed confusion claimed by Reeds Executive Plc, Reed Business Information used the initial letters’ RBI’ to represent their business. The use of the initials for the words’ Business Information’ conveyed a message that the words were part of the business name, and therefore could not be regarded as merely descriptors which could be disregarded as a mark for comparison. Based on this, the words’ Reed Business Information’ can only be similar to the ‘REED’ trade mark based on this word, but the two are not identical since the use of initials discredit any similarities in the two companies, and this means that there is no confusion when it comes to the company identification.
Double identity results when two companies offer an identical product or services, thus making it difficult for the consumers to trace the origin of the services or products. In the case of Reeds Executive Plc v. Reeds Business Information, the two companies were not involved in the provision of similar services. Reed Business Information services did not include employment agency services, but the company only engaged itself in job advertising services. Reed Executive Plc, on the other hand, dealt with vetting of suitable persons for employment, and this means that their product line was different. Based on this, even if Reed Business Information used an identical trade mark to promote its business, there could be no confusion, as RBI was involved in jobs advertisement, while Reeds Executive Plc vetted persons who would be suitable for employment, which makes confusion among the consumers more difficult. The differentiation of services does not either pose a negative threat to Reeds Executive Plc, both financially and customer reduction. The two companies rarely share a common market niche, and therefore, even if the RBI used the word ‘REED’ as a metatag, it only amounted to fair use.
Reed Business Information claimed that the use of the word ‘REEDS’ was an ‘own name,’ and this means that it had the right to use it in their business. There are so many businesses that share the same word, especially the surname, and this is the case for both Reeds Executive Plc and Reeds Business Information. However, this does not amount to any confusion in the two marks. In considering the probability of confusion between Reeds Executive Plc and RBI’s marks, it can be said that the consumers may be sensitive to small differences that exist between the marks, which for this case include the surname, which is common in both marks and which have a little distinctive character. There is no evidence to suggest that the consumers were confused as the product line of the two companies tends to be different, and by this, the claim of trade mark infringement does not hold.
Third parties have an obligation to maintain the originality of their trade mark and therefore, they are under a duty not as well to infringe registered trade marks. However, the obligation does not mean that third parties must take such steps as may be necessary to reduce the risk of confusion to zero. In the case of Reeds Executive Plc v. Reeds Business Information, the risk of confusion was almost zero despite sharing the same word ‘REEDS.’ However, after RBI realized that there might be confusion, the company devised strategies to reduce the risk of confusion among the consumers, meaning that it acted responsibly and conducted its business in an honest manner. RBI considered that Reeds Executive Plc was established long before it came up, and that is why it developed a different website totaljobs.com, which differed from reeds.co.uk website developed by Reeds Executive Plc, and thus, the risk of confusion had been reduced to zero. It, therefore, means that there was no infringement as there was no double identity.
Reeds Business Information used the word ‘REED’ in their copyright notice, but there is no evidence that the use of the word resulted in direct confusion as it was not used for promotional purposes, and neither was it used for trade. Confusion is deemed to be perceived by the public, and according to evidence obtained from consumer impressions of the website as a whole, it was too shallow and thus could not lead to a conclusion that the use of the copyright notice could result in confusion. A customer had to scroll down to the bottom of each page to find the copyright notice, and this means there was no direct evidence of confusion in the usage of the word ‘REED,’ especially as a metatag.
In the passing off law, the use of ‘own name’ defense tends to be extremely narrow, and based on this; no case has ever been ruled in favor of the claimant. Since the test is honesty, there is no way an individual who is causing deception and is aware that causing deception has a defense of passing off. According to the Trade Marks Act 1994, the ‘own name’ defense tends to be wider and can be applied in respect of organizational names. Based on this, the defense of ‘own name’ was applicable in the case of Reeds Executive Plc v. Reeds Business Information in respect to the use of ‘REED’ in the copyright notice. In regard to this defense, it is rare to find a person infringing a trade mark to cause deception to the consumers while they are fully aware that the UK law stipulates the defense of dishonesty in trade mark infringement in the passing off law. In the case of Reeds Executive Plc v. Reeds Business Information, RBI used its own name to register the trade mark, and also, it acted in an honest way as it did not engage in double identity both of the services delivered and name of the company. Upon realization that there might be confusion, RBI developed a strategy to ensure that zero confusion resulted, and this is a clear indication that the company was acting in an honest manner.
Reeds Business Information was sued for trade mark infringement by Reeds Executive Plc. RBI had used the word ‘REED’ as a metatag and thus accused to have resulted to confusion among the consumers. However, the Court of Appeal ruled in favor of RBI, holding that it used an ‘own name’ as a defense applied in the case of a trade mark. Also, Reeds Executive Plc claimed that RBI’s use of the word ‘REEDS’ led to confusion but did not illustrate how the consumers were confused. RBI used the word ‘REEDS’ as a metatag and in its invoices, but its actions did not amount to any confusion to the customers. In the case of metatags, the word ‘REEDS’ was not visible to the consumers, and by this, there is no way they could have been confused by the two companies. In addition, the use of the word ‘REEDS’ in the invoices, in promotional materials, or in press releases does not infringe the REEDS trade mark as no one could be confused by it. Also, the services provided by both companies were different, with one providing suitable coaching candidates while the other, RBI, was involved in the job advertisement. Based on this evidence, it is clear that there was no trade mark infringement in the case of Reeds Executive Plc v. Reeds Business Information (RBI).
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