The Court of Appeal has this week delivered a blow to UK retailer Argos in its trademark and domain name dispute with US software company Argos Systems by upholding a decision by the High Court.
The dispute began in July 2015, when the retailer accused Argos Systems of trademark infringement by allowing the argos.com domain name, which was registered by Argos Systems to feature Google AdSense advertising.
The UK store didn’t object to use of the domain as a website promoting their software, but rather use of the domain in conjunction with adverts.
Argos owns a number of words and figurative trademarks for ‘Argos’ for both advertising and retail services.
In addition, the retailer registered the domain name argos.co.uk in 1996 and launched its e-commerce website in 2004.
However, Argos Systems registered the domain name argos.com before this, in 1992. The software company only trades in North and South America, rather than in the UK, where Argos operates.
Argos argued that, because UK-based consumers could see the Google adverts for Argos Systems’ software products and services, Argos Systems was targeting them with online marketing and therefore abusing and profiting from violations of the ‘Argos’ trademarks.
The retailer claims that, by 2004, a large number of UK consumers were visiting argos.com as a result of the adverts, they say such use of the adverts was “abusive” and amounted to “unfair free-riding”, as well as damaging the distinctive character and reputation of Argos’s trademarks.
Argos Systems explanation is that the adverts do not target any particular geographical region and that the average customer would quickly realise if they ended up on the wrong Argos platform.
The case went to the High Court in February 2017, where the judge sided with Argos Systems on the basis that Argos systems had not infringed the Argos marks and the use was in relation to its own name and practices. The UK retailer had also failed to establish that the software company caused misrepresentation to the public.
The case was taken to the Court of Appeal where earlier this week they upheld the decision by the High Court.
The Court of Appeal said that using Google adverts is a normal unobjectionable activity where Argos Systems had not sought the UK traffic through the adverts nor were they able to prevent it and Argos would have also benefitted as a result of any customer confusion.
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