Argos v Argos: Retailer receives blow from Court of Appeal
Written by Ellis Sweetenham on 11 October 2018« Return to Reading Room
In a dispute which started in 2015 against a US based namesake, Argos the UK retailer has taken a hit in its trade mark infringement and domain name dispute.
The retailer initiated the dispute against US software company Argos Systems, claiming that the registration and use of their domain argos.com in Google AdSense advertising was an infringement of their trade mark.
The basis of such claim is a number of UK and EU marks registered including for the word ‘Argos’. In addition, Argos noted they had the domain argos.co.uk registered since 1996.
The claim stated that the UK retailer did not mind Argos systems having the .com domain but had issue with the use of such domain in respect of the Google Ads.
It was stated that as UK consumers could see the ads for Argos Systems, this is violating Argos’s trade marks and Argos Systems is benefitting from that.
In turn, these adverts were then amounting to ‘unfair free rising’ and caused damage to Argos UK’s distinctive character and reputation.
However, hitting back at that, Argos Systems has had their domain registered since 1992, four years prior to Argos UK.
They made particular reference to geographical location of their business, only trading in north and south America, stating that the adverts had no geographical bias and it would be obvious to a consumer they were not on the correct site.
When the matter was first heard in court, by the High Court, in 2017, they ruled in favour of Argos Systems.
The Court ruled that Argos Systems was not infringing Argos’s marks, as its use was an honest practise and simply referring to their own name, not making a misrepresentation to the public.
Argos UK appealed the matter to the Court of Appeal, hoping for a difference in option but were disappointed.
Their appeal was rejected, and the Court of Appeal also ruled in favour of Argos Systems.
The Court stated that the Google Ads were a ‘normal and commercially unobjectionable activity’ and any potential confusion that may occur would benefit both sides.
The court agreed that any consumer visiting the .com site would know immediately that they were a separate company and had visited the wrong site.
Argos UK therefore failed in their fight and are likely to bit hit with an order to pay the other sides costs- costly outcome for them!
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