Significant cases

Reed Executive Plc v Reed Business Information

This was the first trade mark/passing off case to come before the Court of Appeal which related to infringement on the internet, in website metadata, in use of adwords and "SEO". It is also an important case in its application of the ECJ’s decision in LTJ Diffusion as to the meaning of identical trade marks.

The parties had co-existed for any years with low levels of confusion due to their concurrent uses of the name ‘Reed.’ The dispute arose when the defendant publishers set up an on-line jobs website, which the claimants alleged infringed their trade mark for employment agency services. The website was not called ‘reed’ but the name was used in metadata and as an adword provided free of charge by Yahoo! to the defendant with other paid-for adwords. The Court of Appeal decided that ‘Reed Business Information’ was not identical to the mark to ‘Reed’, nor were the services offered identical and found that there was no likelihood of confusion for s 5(2). Jacob LJ also doubted whether invisible uses of the registered mark as metadata or adwords was ‘use’ of them for the purposes of trade mark infringement.

The second CA judgment related to an argument as to the impact on costs of the defendant’s alleged failure to mediate, where the parties had negotiated on a without prejudice basis. The CA declined to go behind the without prejudice nature of the negotiations to apportion blame for a consequential failure to mediate.