Reed Executive Plc & Ors v Reed Business Information Ltd & Ors

For trade mark infringement under article 5(1)(a), the allegedly infringing sign must be identified and compared as a whole with the registered mark. Additions which the average consumer would notice prevent identity. A service specification is construed by its meaning at registration and covers its core activities, not every activity connected with the field.

An employment agency controls the introduction between employer and job-seeker and has a direct interest in a successful match. A searchable online jobs service which merely supplies information is not such an agency. Under article 5(1)(b), liability depends on a global assessment of likely confusion. The law does not impose a duty to reduce all risk of confusion to zero.

Reed Executive plc and others v Reed Business Information Ltd and others concerned the use of “Reed” on the totaljobs.com recruitment website. The claimants owned a registered mark for “Reed” for employment agency services. They alleged trade mark infringement and passing off in respect of website branding, a copyright notice, Yahoo banner advertising, metatags and related uses.

Pumfrey J had found infringement and passing off in broadly framed terms in judgments dated 20 May 2002, reported at [2003] RPC 12, and 19 December 2002, reported at [2002] EWHC 2772. The defendants appealed and the claimants cross-appealed on limited matters. The central issues were whether the online service was an employment agency service, whether the challenged uses created a likelihood of confusion, and the proper scope of any damages inquiry.

1. Appeal allowed. Jacob LJ, with whom Rix and Auld LJJ agreed, held that the broad findings of trade mark infringement and passing off could not stand. The unappealed findings concerning Version 1 of the website and the use of the two logos remained.
2. For article 5(1)(a) of the Trade Marks Directive, the relevant signs were “Reed Elsevier” and “Reed Business Information”, not “Reed” extracted from those composite names. The additions were visually and commercially significant. There was therefore no identical sign. The specification for employment agency services had to be construed as at the registration date. Its core did not include every recruitment-related activity.
3. An employment agency controls the introduction between employer and job-seeker and has a direct interest in a successful placement. Totaljobs did neither. Its searchable advertisements, CV database and job-alert functions supplied information and enabled direct contact. They did not make it an employment agency. There was consequently no identity of services.
4. The article 5(1)(b) inquiry required a global assessment of likely confusion, not a duty to reduce risk to zero. The common surname “Reed”, the distinct composite name “Reed Business Information”, and the thin and prompted survey evidence did not establish likely confusion from the copyright notice alone. Nor did the Yahoo banner, metatag and directory uses establish likely confusion. Save for the unappealed uses, there was no misrepresentation for passing off.
5. The court nevertheless considered the own-name defence. A company could invoke article 6(1)(a), and some actual confusion could coexist with honest practices. The decisive question was whether, assessed overall, the defendant had acted unfairly towards the trade mark proprietor. This discussion was unnecessary to the result.
6. The damages inquiry was remitted on the substantially reduced basis produced by the appeal. The judge could use case-management powers to confine a small or speculative quantum claim. The court was not prepared to assess damages summarily without a proper basis, and would hear fresh submissions on costs.

• Court of Appeal (Civil Division): Allowed the defendants’ appeal in [2004] EWCA Civ 159. It set aside the broad findings of infringement and passing off, save for unappealed findings relating to Version 1 and the logos, and remitted the damages inquiry on a narrowed basis.
• High Court (Pumfrey J): In the substantive judgment of 20 May 2002, reported at [2003] RPC 12, found trade mark infringement and passing off in relation to the challenged website uses.
• High Court (Pumfrey J): In the further procedural judgment of 19 December 2002, [2002] EWHC 2772, addressed the form of order, damages inquiry and costs.