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

Identity-based trade mark infringement requires identity both of the sign and of the goods or services. The defendant’s sign must first be identified as a whole. Additional words which consumers would notice can exclude identity. Specifications of services should be confined to their core meaning. Employment agency services involve control over introductions and a direct interest in successful matching; searchable job advertisements alone do not suffice.

Where signs or services are merely similar, infringement requires a global assessment of likely confusion about commercial origin. Confusion caused by a combination of material does not establish that each component is confusing alone. Search results and advertisements triggered by a registered mark require the same assessment. Passing off requires a damaging misrepresentation. There is no additional duty to reduce every risk of confusion to zero.

Reed Executive plc and Reed Solutions plc, collectively described as Reed Employment, operated an established employment agency business. Their registered word mark REED covered employment agency services. Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs.com Ltd, collectively described as RBI, belonged to a publishing group. RBI developed totaljobs.com from its existing business of publishing recruitment advertisements.

Reed Employment alleged that RBI’s uses of Reed on the website, in copyright notices, in metatags and in search-related advertising infringed the registered mark and amounted to passing off. Pumfrey J found infringement and passing off in his substantive judgment, reported at [2003] RPC 12. His subsequent judgment, [2002] EWHC 2772, addressed relief, a damages inquiry and costs.

RBI appealed while accepting the findings concerning website logos. Reed Employment cross-appealed against the rejection of claims concerning invoices, press releases and promotional material. The principal questions concerned identity of signs and services, likely confusion from the disputed uses, the own-name defence and the conduct of the remaining damages inquiry.

1. The appeal would be allowed and the cross-appeal dismissed. The accepted findings concerning Version 1 and the logos remained. The remaining disputed uses established neither infringement nor passing off. The damages inquiry would be remitted to the judge within its reduced scope. The final form of order and costs required further submissions.

2. Article 5(1)(a) required identity both of signs and of services. Following the guidance in LTJ Diffusion v Sadas Vertbaudet, identity was construed strictly. The defendant’s complete sign had to be identified before comparison. Reed Business Information contained additional words which the average consumer would notice. It was therefore similar to REED rather than identical to it.

3. A service specification should be confined to the substance of its possible meanings. The core of employment agency services comprised control over introductions and a direct interest in successful matching. Searchable advertisements, a CV database and automated job emails supplied information without that control or responsibility. Totaljobs therefore supplied similar, rather than identical, services. The wider definition in section 13 of the Employment Agencies Act 1973 served a different statutory purpose.

4. Article 5(1)(b) required a global assessment of likely confusion about commercial origin. The assessment concerned the reasonably informed, observant and circumspect average consumer. Mere association was insufficient. Common surnames could make consumers more alert to distinguishing details. Findings about combined website material did not establish confusion from the copyright notice alone. The evidence concerning that notice was insufficient, and prompted speculation in a usability study provided weak support.

5. The Yahoo banner contained no reference to Reed and created no likely confusion. Any infringement after clicking through depended on the website content. Likewise, the metatags and directory description established no misleading connection. Whether invisible use constituted trade mark use, and its consequences under article 5(1)(a), remained open. The banner was also outside passing off by substitution.

6. Obiter, a company could invoke the statutory own-name defence. Trade mark use was within its potential scope. Applying Gerolsteiner Brunnen v Putsch, honest practices required an overall assessment of fair dealing with the proprietor’s legitimate interests. Some confusion could coexist with honest practices. RBI’s progressive reduction of its name after Version 1 supported honesty. Jacob LJ favoured liability for damage caused by significant deception even when unintended, but that question was academic.

7. The court could control a small damages inquiry through statements of case, supporting evidence, restricted disclosure, paper determination and hearing limits. It could not simply select an arbitrary small award. The automatic availability of damages on a user basis was questioned and left for the judge. There was no independent duty to eliminate every risk of confusion.

• Court of Appeal (Civil Division): In [2004] EWCA Civ 159 , allowed RBI’s appeal and rejected Reed Employment’s cross-appeal. The unappealed findings remained, and the reduced damages inquiry was remitted. Rix and Auld LJJ agreed with Jacob LJ.
• High Court: Pumfrey J’s substantive judgment of 20 May 2002, reported at [2003] RPC 12, found trade mark infringement and passing off. His judgment of 19 December 2002, [2002] EWHC 2772, addressed relief, the damages inquiry and costs. Both judgments were subject to partial appeals and cross-appeals.