Could Reed Business Information use the “own name” defence when sued by Reed Executive over “Reed” metatags and name checks in its Totaljobs.com recruitment site?
Topic: Brands
Who: Reed Executive plc v Reed Business Information Limited/totaljobs.com
When: May 2002
Where: Chancery Division of the High Court, London
What happened:
Reed Executive ("RE") brought proceedings for trademark infringement and passing off against Reed Business Information Limited ("RBI") in respect of RBI's use of the "Reed" brand on the RBI owned website totaljobs.com. RE had been in the recruitment agency business for many years and registered the word "Reed" as a trademark in respect of "employment agency services".
RBI has historically been in the publishing business, but nevertheless there had over the years been many instances of confusion in the marketplace between the two businesses owing to both companies' use of the "Reed" brand. This confusion was heightened, RE said in the proceedings, with the launch of the totaljobs.com website and its use of the Reed brand, not only in its metatags but also, more visibly, in a copyright notice which appeared on the site.
RBI defended on the basis first of all that totaljobs.com was not providing "employment agency" services as that term was traditionally understood and therefore not infringing RE’s trade mark, and also on the basis that since the Reed brand was part of RBI’s corporate name, it was entitled to a defence under section 11 of the Trade Marks Act 1994. This appears to absolve businesses of liability for trademark infringement if all they are doing is using their "own name". Passing off was also denied.
On the question of whether totaljobs.com was providing "employment agency services" (crucial to RE achieving a court finding of trademark infringement without the need to show confusion) Pumfrey J held that although totaljobs.com were not conducting interviews or individually matching individuals to jobs, they were acting as a go-between by matching jobseekers to vacancies and were therefore operating as an "employment agency" in its broadest sense.
As for whether RBI could avoid liability because they were using their "own name", the court pointed out that the defence was only available provided RBI could establish that their use of the Reed brand was, in context, in accordance with honest commercial practices.
Before the launch of totaljobs.com, RBI had been aware of the confusion that had already taken place between the two Reed businesses. Now that it was moving into the recruitment business by way of the new site, it had a particular duty, the court said, to minimise the risk of confusion between the two businesses. Despite this, it had allowed the use of the brand in the site's metatags and the copyright notice when neither of these uses were essential for the successful operation of the site. This was not in the court's view honest commercial practice, so the "own name" defence was not available. Invisible use of the brand by way of a metatag was as much use which could amount to infringement as any other type of use, and so trademark infringement was held to have incurred, as well as passing off given that RE had established its reputation in the Reed brand, confusion/deception and damage.
Why this matters:
Case law has already established that use of a competitor's brand as a metatag in one's own website can amount to a trademark infringement, and this case confirms that. The Judgment also underlines the difficulty of successfully running the "use of own name" defence to a trademark infringement action.
