E-Accounting Solutions Limited & Anor v Global Infosys Limited & Anor

Trade mark infringement through internet advertising must distinguish between invisible keyword use and visible use in advert text. Bidding on a competitor’s mark as a keyword may infringe where the resulting advertisement does not enable reasonably informed and observant users to ascertain its commercial origin. The keyword itself is the sign used; the advert is the consequence of that use. Visible use of an identical or similar sign in advert text is analysed separately and may affect the origin, distinctive and reputational functions of the mark. A space omitted from a word mark may be immaterial to identity. Under the Trade Marks Act 1994, the relevant provisions continued to have their pre-Brexit meaning because they had not been amended after implementation day. The court also indicated that the same result followed from orthodox domestic purposive interpretation.

The claimant provided accountancy outsourcing and offshoring services under the registered mark ADVANCE TRACK. The defendant instructed its marketing agency to use “advancetrack” as a Google keyword. Through an error or misunderstanding, the term also appeared in the defendant’s visible advert text between April and May 2021.

The claimant alleged infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994, passing off, and loss. The defendant denied infringement and counterclaimed for invalidity and partial revocation. The principal issues concerned the legal distinction between keyword use and advert-text use, the effect of Brexit on retained trade mark law, and whether the mark was distinctive, reputable and genuinely used.

1. Liability. The claim for trade mark infringement and passing off succeeded. The defendant’s keyword use infringed sections 10(1) and 10(2) of the Trade Marks Act 1994. Its visible advert-text use infringed sections 10(1), 10(2) and 10(3) in respect of “Advancetrack”, and sections 10(2) and 10(3) in respect of “Advancetrack Outsourcing”.
2. Brexit and interpretation. The relevant provisions of the Act had not been amended after 31 December 2020. Sections 5(2) and 6(3) of the European Union (Withdrawal) Act 2018 therefore preserved EU supremacy, indirect effect and retained case law for this case. Independently, the same result followed from ordinary domestic purposive interpretation, treating the Recast Directive as relevant statutory context but subordinating it to Parliament’s words.
3. Internet use. Keyword use and advert-text use are analytically distinct. In keyword cases, the keyword is the sign used and the Google France test asks whether the resulting advertisement enables the average internet user to ascertain whether the services originate from the proprietor or an economically connected undertaking. Visible advert-text use is assessed in the context in which the sign appears and may directly affect the origin function.
4. Identity and confusion. “Advancetrack” was identical to “ADVANCE TRACK” under section 10(1). The omitted space was visually insignificant and aurally irrelevant. Alternatively, it was confusingly similar under section 10(2). “Advancetrack Outsourcing” was not identical, but was confusingly similar because the mark retained an independent distinctive role, the services were closely related, and the use created a risk of direct or indirect confusion.
5. Reputation and injury. The mark had an established reputation among British accountants. The defendant’s advert-text use created a link with the mark and caused dilution and tarnishment. The confusing adverts impaired the mark’s reputation for trust and reliability and diverted some potential customers to competitors, even though the defendant itself made no sales.
6. Invalidity and revocation. The mark was not customary or generic in the relevant trade and was not exclusively descriptive of the claimant’s services. Its use in one-word forms was genuine use of the registered two-word mark because the variants did not alter its distinctive character. Class 36 was genuinely used, but Classes 42 and 45 were revoked by agreement.
7. Passing off. The claimant established goodwill and reputation, a misrepresentation likely to deceive a substantial number of relevant customers, and damage through diversion and injury to goodwill. Intention was unnecessary.
8. Relief. The court was provisionally minded to refuse an account of profits, because the defendant had no real prospect of having made profits, but to assess the claimant’s damages by a proportionate summary or streamlined process. Further submissions on relief and costs were directed.

This was a first-instance judgment of the High Court. The claim was issued on 15 September 2021. Various interlocutory orders concerned security for costs, amendment of the defence, disclosure and allocation to the Shorter Trials Scheme.