Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
Last month, well-known UK retailer Argos Limited (“Argos UK”) lost an intellectual property case in the High Court against US company Argos Systems Inc. (“ASI”) over the alleged infringement of its ‘ARGOS’ trade mark.
ASI provides Computer Aided Design (CAD) systems for the design and construction of buildings. It has been trading under the name Argos since 1991 and, in 1992, it registered the domain name www.argos.com. Argos UK has been trading since 1973, but did not register the domain name www.argos.co.uk until 1996, by which point the .com domain name had already been taken. Argos UK owns various UK and EU trade marks for ‘ARGOS’.
The complaint centred on the use of mark ARGOS as part of the domain name argos.com in conjunction with Google advertising displayed on the website, with Argos UK alleging that the website was targeted at UK consumers as a result of the adverts.
From 2008 to 2015, ASI provided space for advertising on its website through the use of Google AdSense. At the same time, Argos UK were utilising Google AdWords to advertise their products on the internet. This meant that visitors to argos.com would sometimes see banner adverts for Argos UK, as well as their competitors. The majority of people visiting argos.com were from the UK and ASI was therefore able to generate advertising revenue from these visitors, many of whom were visiting the website in the mistaken belief that it was the Argos UK website.
Argos UK claimed that this use infringed upon their trade marks and was ‘abusive’ because it amounted to free-riding of the ARGOS mark, as well as being liable to damage its distinctive character.
The decision focused on two main issues: (1) whether Argos UK consented to ASI’s use of ARGOS via the contractual terms between it and Google, and (2) whether ASI was targeting UK consumers.
In brief, the judge found that Argos UK’s consent to the display of its own ads by ASI on argos.com was unequivocally demonstrated by the terms of their Google AdWords contract, which provided for the display of its adverts on any Google AdSense partner website.
On the issue of targeting UK consumers, the judge found that ASI’s website was not targeted at the UK and therefore ASI had not used the ‘ARGOS’ trade mark within the UK. This was based on evidence showing that most of the UK visitors to ASI’s website went there by mistake; that many of these visitors left the website almost instantaneously; and that the Argos UK adverts provided a ready means of taking them to where they actually wanted to go.
The decision sets a precedent for online advertising, such as that through the use of Google’s advertising services.
It is worth noting that, whilst it was decided that Argos UK had consented to the display of its own ads on ASI’s website, Argos UK had not consented generally to the display of third party ads. In other words, Argos UK was still free to raise complaint against any infringement of its rights arising on this basis.
The case also highlights the ‘first-come-first-served’ nature of domain name registrations and the benefits of registering your domain names at the earliest opportunity.
If you require advice about protecting your trade marks online, please get in touch with us.