“The Google AdWords program enables you to create advertisements which will appear on relevant Google search results pages and our network of partner sites. … The Google AdSense program differs in that it delivers Google AdWords ads to individuals’ websites. Google then pays web publishers for the ads displayed on their site based on user clicks on ads or on ad impressions, depending on the type of ad.”
“… These Terms govern Google’s advertising programs (“Program”) … and, as applicable, Customer’s participation in any such Program(s), Customer’s online management of any advertising campaigns (“Online Management”) … (together the “Agreement”). Google and Customer hereby agree and acknowledge … 2. The Program. Customer is solely responsible for all: (a) ad targeting options and keywords (collectively “Targets”) and all ad content, ad information, and ad URL (“Creative”), whether generated by or for Customer; and (b) web sites, services and landing pages which Creative links or directs viewers to, and advertised services and products (collectively “Services”)… Ads may be placed on any content or property provided by Google (“Google Property”), and unless opted-out by Customer on any other content or property provided by a third party (“Partner”) upon which Google places ads (“Partner Property”). … 4. Prohibited Uses; License Grant; Representation and Warranties … Customer represents and warrants that it holds and hereby grants Google and Partners all rights (including without limitation any copyright, trademark, patent, publicity or other rights) in Creative, Services and Targets needed for Google and Partner to operate Google’s advertising program for Customer … in connection with this Agreement (“Use”) …” (2) The 2009 terms provide as follows: “This Agreement … is entered into by you … (“Customer”/”
“These … (“Terms”) are entered into by [Google] … and … (“Customer”). These Terms govern Customer’s participation in Google’s advertising programmes and services … (collectively, “Programmes”). In consideration of the foregoing, the parties agree as follows: 1 Programmes. Customer authorizes Google and … (“Affiliates”) to place Customer’s advertising materials and related technology (collectively, “Ads” or “Creative”) on any content or property (each a “Property”) provided by Google or its Affiliates on behalf of itself or, as applicable, a third party (“Partner”). Customer is solely responsible for all: (i) Creative, (ii) Ad trafficking or targeting decisions (eg keywords) (“Targets”), (iii) Properties to which Creative directs viewers (eg landing pages) along with the related URLs and redirects (“Destinations” and (iv) services and products advertised on Destinations (collectively, “Services”) … 5 Warranty and Rights … Customer warrants that (a) it holds, and hereby grants Google, its Affiliates and Partners, the rights in Creative, Destinations and Targets for Google, its Affiliates and Partners to operate the Programmes …” 1 Programmes. Customer authorizes Google and … (“Affiliates”) to place Customer’s advertising materials and related technology (collectively, “Ads” or “Creative”) on any content or property (each a “Property”) provided by Google or its Affiliates on behalf of itself or, as applicable, a third party (“Partner”). Customer is solely responsible for all: (i) Creative, (ii) Ad trafficking or targeting decisions (eg keywords) (“Targets”), (iii) Properties to which Creative directs viewers (eg landing pages) along with the related URLs and redirects (“Destinations” and (iv) services and products advertised on Destinations (collectively, “Services”) … 5 Warranty and Rights … Customer warrants that (a) it holds, and hereby grants Google, its Affiliates and Partners, the rights in Creative, Destinations and Targets for Google, its Affiliates and Partners to operate the Programmes …”
“this is all misdirected traffic with over 50% meant for argos.co.uk”. (5) According to the later email, the average visit duration was 22 seconds, and the average number of pages viewed per visit was 1.16. (6) Mr Thomas further commented as follows with regard to traffic drivers: “Mobile devices give priority [to] .com over cctld in direct navigation. A certain percentage of users expect Home Retail Group to own argos.com (this is demonstrated through the above traffic figures). Once a consumer navigates to argos.com through Google Chrome’s omnibox priority is given to argos.com over argos.co.uk in all future searches until the user clears their history (i.e. repeating traffic to argos.com). Note Google Chrome has circa 30% market share in UK.”
“Rights conferred by a Community trade mark 1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered … (c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.” (a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered … (c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.”
“The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”
“Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing off is such an instrument. If it would not inherently lead to passing off, it does not follow that it is not an instrument of fraud. The court should consider the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place. If, taking all the circumstances into account the court should conclude that the name was produced to enable passing off, is adapted to be used for passing off and, if used, is likely to be fraudulently used, an injunction will be appropriate.”
“We now have a view of the performance for the past 3 months for the argos.com site. As a placement it had been performing well and has therefore not been excluded during our optimisation”
“Impressions 265,521; Clicks 19,763; CTR [i.e. Click Through Rate] 7.44%; Sales 1,631; Revenue£106,214 ”
“Thanks for this data. Please can we exclude this website from all future activity”
“To give some comparison, this is performing a lot better than our total activity in this space – click thru rate of 0.23%, conversion 5.5% and gives an indication of how many people are actually looking for us when on the domain”
“We are presently following up on our legal options for Argos.com with a view to putting across the (potential) … carrot/stick offer we discussed”
“Legal has found a way to put some legal pressure too”
“…I asked a couple of months ago a friend of mine who lives in London while Skypeing with him to go argos.com and tell me what ads he’s seeing while I checked mine. And he got the ad of argos.co.uk on his view, I didn’t… So Google is using either the information leaking from the browser or the ip address space block that reveales [sic] also the origin of the browser and thus show “local” ads. AND [sic] which is so lovely they show ads of argos.co.uk AND [sic] the users also click on these!! I’d say that’s the reason why the click rate twentyfolded [sic] in Jan/Feb!” (2) An email from Mr Outinen to persons unknown, which included the following: “Then there’s the real value of revenue from ads (Google) because of the UK (Argos the retailer) people finding themselves in the wrong place AND optionally (hopefully!) clicking the ads (and hopefully UK people are fed with UK based adds = Argos Co Uk ads to be clicked. I once checked in the past with a friend of mine who lives in London that he is really given different ads and if I remember correctly he was fed with more than one “good ones” and I was given at the same time totally different ones :-)”
“We typically get around 7000 to 8000 page views per day from January through October, and 10000 to 15000 per day in November and December. Only about 2.7% of these page views are coming from within our market area. For the past couple of years, I have been changing our home page to a smaller and more advertisement friendly version for November and December, then change it back to one that focuses more on our real business for the rest of the year, which generates much less advertising revenue.”
“It looks like you are trying to reach the Argos (www.argos.co.uk) department store, but we are not it. We are a software company in the US. I wish you luck with the TV”
“I believe you are trying to reach the Argos department store, www.argos.co.uk. We are a software company in the US, so I don’t think I’ll be much help with this”
“I’m sorry to hear about your phone, however, I think you are trying to reach the Argos department store in the UK, and not Argos Systems, a software provider in the US. You may find their contact info on their website: www.argos.co.uk.”
“It sounds like you are looking for the Argos store based in the UK, not Argos Systems in the USA. You should try their website: www.argos.co.uk.”
“58. It is well established that “consent” in the Regulation has an autonomous Community meaning and requires the unequivocal demonstration by the trade mark proprietor of renunciation of its exclusive rights under Article 9. This need not be express and can be implied, but only where the facts and circumstances in question unequivocally demonstrate such a renunciation of rights. The leading authority is the decision of the European Court of Justice in Zino Davidoff (Joined Cases C-414 to 416/99 Zino Davidoff SA v A&G Imports Ltd and Levi Strauss & Co v Tesco Stores Ltd[2002] Ch 109 ): see in particular at [35] to [47] and [53] to [58]. These paragraphs are too well known to need citation, but I draw attention to [58] in which the Court stated: “58. A rule of national law which proceeded on the mere silence of the trade mark proprietor would recognise not implied consent but rather deemed consent. That would not meet the need for consent positively expressed, required by Community law.”
“58. A rule of national law which proceeded on the mere silence of the trade mark proprietor would recognise not implied consent but rather deemed consent. That would not meet the need for consent positively expressed, required by Community law.” 59. Thus a consent which is merely deemed to have been given in accordance with a provision of national law is not sufficient to amount to “consent” for the purpose of the Regulation. There must be actual consent, either because the trade mark proprietor has said in terms that it does consent or because it is obvious from the circumstances that it does so. 60. Although Zino Davidoff was concerned with a trade mark claim under Article 5 of Directive 89/104, this was in the same terms as Article 9 of the Regulation. 61. Lewison LJ provided a useful summary of the effect of the Zino Davidoff case in Honda Motor Co Ltd v Neesam[2006] EWHC 1051 (Ch) at [5]: “5. In the joint cases of Zino Davidoff SA v A&G Imports Ltd, and Levi Strauss & Co v Tesco Stores Ltd[2002] Ch 109 , the European Court of Justice said that the concept of consent for this purpose was to be uniformly interpreted across the whole of the EU. The ECJ made a number of important points. First; consent amounts to renunciation of the right to the trademark proprietor, and must, therefore, be unequivocally demonstrated. Second; an intention to renounce will normally be gathered from an express statement. Third; there may be circumstances from which consent may be inferred, but it is an actual consent, and not a deemed consent that must be established. Fourth; it is, in almost all cases, for the trader to prove consent, not for the trademark proprietor to prove the absence of consent. Fifth; consent cannot be inferred from the trademark proprietor’s silence nor from the fact that the goods carry no warning, nor from the fact that the trademark proprietor originally placed goods on the market without any further restriction on the onward sale of those goods.” 62. In this summary too the distinction between actual and deemed consent is highlighted.”
“All [AUL’s] claims complain of [ASI’s] use of the sign ARGOS in the form of the domain name argos.com … in relation to versions of [ASI’s] home page deliberately directed to UK internet users – in particular [AUL’s] customers – and featuring advertisements aimed at profiting from those users”
“It must then be stated that, in a situation such as the one in the main proceedings, the onus of proving interference must lie with the trade mark proprietor who alleges it. If that is proven, it is then for the trader sued to prove the existence of the consent of the proprietor to the marketing of the goods in the Community (see, on the subject of the Directive, Zino Davidoff and LeviStrauss, cited above, paragraph 54).”
“We now have a view of the performance for the past 3 months for the argos.com site. As a placement it had been performing well and has therefore not been excluded during our optimisation … Spend circa£300 per month. Rev circa£34,000 a month … You would probably argue that it should be there – at least it stops people having to re-search and find an Argos click through. Conversely turning it off would not have a massive impact”
“… [This] was considered by the CJEU in the context of offers for sale on an online marketplace inCase C-324/09 L’Oréal SA v eBay International AG[2011] ECR I-0000 , [2012] EMLR 6. In that case the Court held as follows: “61. Whilst recognising those principles, eBay submits that the proprietor of a trade mark registered in a Member State or of a Community trade mark cannot properly rely on the exclusive right conferred by that trade mark as long as the goods bearing it and offered for sale on an online marketplace are located in a third State and will not necessarily be forwarded to the territory covered by the trade mark in question. L’Oréal, the United Kingdom Government, the Italian, Polish and Portuguese Governments, and the European Commission contend, however, that the rules of Directive 89/104 and Regulation No 40/94 apply as soon as it is clear that the offer for sale of a trademarked product located in a third State is targeted at consumers in the territory covered by the trade mark. 62. The latter contention must be accepted. If it were otherwise, operators which use electronic commerce by offering for sale, on an online market place targeted at consumers within the EU, trademarked goods located in a third State, which it is possible to view on the screen and to order via that marketplace, would, so far as offers for sale of that type are concerned, have no obligation to comply with the EU intellectual property rules. Such a situation would have an impact on the effectiveness (effet utile) of those rules. 63. It is sufficient to state in that regard that, under Article 5(3)(b) and (d) of Directive 89/104 and Article 9(2)(b) and (d) of Regulation No 40/94, the use by third parties of signs identical with or similar to trade marks which proprietors of those marks may prevent includes the use of such signs in offers for sale and advertising. As the Advocate General observed at point 127 of his Opinion and as the Commission pointed out in its written observations, the effectiveness of those rules would be undermined if they were not to apply to the use, in an internet offer for sale or advertisement targeted at consumers within the EU, of a sign identical with or similar to a trade mark registered in the EU merely because the third party behind that offer or advertisement is established in a third State, because the server of the internet site used by the third party is located in such a State or because the product that is the subject of the offer or the advertisement is located in a third State. 64. It must, however, be made clear that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory (see, by analogy, Joined Cases C-585/08 and C-144/09 Pammer and Hotel Alpenhof[2010] ECR I-0000 , paragraph 69). Indeed, if the fact that an online marketplace is accessible from that territory were sufficient for the advertisements displayed there to be within the scope of Directive 89/104 and Regulation No 40/94, websites and advertisements which, although obviously targeted solely at consumers in third States, are nevertheless technically accessible from EU territory would wrongly be subject to EU law. 65. It therefore falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory. When the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product, that type of detail is of particular importance in the said assessment.”
“102. Joined Cases C-585/08 and C-144/09 Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller[2010] ECR I-12527 , to which reference is made at [64], concerned the interpretation of Article 15(1)(c) of Council Regulation 44/2001/EC of22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“the Brussels I Regulation”), and in particular the requirement that “the contract has been concluded with a person who pursues commercial or professional activities in the member state of the consumer's domicile or, by any means, directs such activities to that member state”
“the trader must have manifested its intention to establish commercial relations with consumers from one or more other Member States, including that of the consumer’s domicile”
“The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a toplevel domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.” 105. In my judgment these matters are also capable of constituting evidence which bears upon the question of whether an offer for sale or an advertisement on a website is targeted at consumers within the European Union for the purposes of the first condition under Article 9(1)(a). It is perhaps worth emphasising that, at least in this context, the question is not one of the subjective intention of the advertiser, but rather one of the objective effect of its conduct viewed from the perspective of the average consumer. 106. Both L’Oréal v eBay and Pammer and Hotel Alpenhof were cases concerned with websites. It is common ground that the test of targeting the consumer in the relevant territory adopted by the CJEU in L’Oréal v eBay is essentially the same approach as had previously been adopted with regard to websites by the courts of this country: see Euromarket Designs Inc v Peters[2001] FSR 20 at [21]-[25], 1800 Flowers v Phonenames[2001] EWCA Civ 721 ,[2002] FSR 12 at [136]-[139] and Dearlove v Combs[2007] EWHC 375 (Ch) , [2008] EMLR 2 at [21]-[25].” “The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a toplevel domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.” [2008] EMLR 2 at [21]-[25].”
“It is clear that the question of whether a website is targeted to a particular country is a multi-factorial one which depends on all the circumstances. Those circumstances include things which can be inferred from looking at the content on the website itself and elements arising from the inherent nature of the services offered by the website. These are the kinds of factors listed by the CJEU in Pammer in the passage cited by Arnold J. However as can be seen from paragraph 51 of Arnold J’s judgment he took other factors into account too, such as the number of visitors accessing the website from the UK. I agree with Arnold J that these further factors are relevant. Their relevance shows that the question of targeting is not necessarily simply decided by looking at the website itself. Evidence that a substantial proportion of visitors to a website are UK based may not be determinative but it will support a conclusion that the acts of communication to the public undertaken by that website are targeted at the public in the UK.”
“Reliance is also placed on Internet use of 1-800 FLOWERS. This name (with the addition of Inc.) is used for a website. Mr Hobbs submitted that any use of a trade mark on any website, wherever the owner of the site was, was potentially a trade mark infringement anywhere in the world because website use is in an omnipresent cyberspace; that placing a trade mark on a website was “putting a tentacle” into the computer user’s premises. I questioned this with an example: a fishmonger in Bootle who put his wares and prices on his own website, for instance, for local delivery can hardly be said to be trying to sell the fish to the whole world or even the whole country. And if any web surfer in some other country happens upon that website he will simply say “this is not for me” and move on. For trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him would be absurd. So I think that the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. In other fields of law, publication on a website may well amount to a universal publication, but I am not concerned with that.”
“I believe it is clear from these authorities that placing a mark on the Internet from a location outside the UK can constitute use of that mark in the UK. The Internet is now a powerful means of advertising and promoting goods and services within the UK even though the provider himself is based abroad. The fundamental question is whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him. All material circumstances must be considered and these will include the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser’s intention.”
“In order to determine whether a trader whose activity is presented on its website or on that of an intermediary can be considered to be “directing” its activity to the member state of the consumer’s domicile, within the meaning of article 15(1)(c) of Regulation No 44/2001, it should be ascertained whether, before the conclusion of any contract with the consumer, it is apparent from those websites and the trader’s overall activity that the trader was envisaging doing business with consumers domiciled in one or more member states, including the member state of that consumer’s domicile, in the sense that it was minded to conclude a contract with them.”
“39 The localisation of an act of re-utilisation in the territory of the Member State to which the data in question is sent depends on there being evidence from which it may be concluded that the act discloses an intention on the part of its performer to target persons in that territory (see, by analogy, Pammer and Hotel Alpenhof, paragraphs 75, 76, 80 and 92; L’Oréal and Others, paragraph 65; and Donner, paragraphs 27 to 29) … 41 The fact that Sportradar granted, by contract, the right of access to its server to companies offering betting services to that public may also be evidence of its intention to target them, if – which will be for the referring court to ascertain – Sportradar was aware, or must have been aware, of that specific destination (see, by analogy, Pammer and Hotel Alpenhof, paragraph 89, and Donner, paragraphs 27 and 28).”
“The fundamental question is whether or not the average consumer of the goods or services in issue within the United Kingdom would regard the advertisement and site as being aimed and directed at him”
“What matters is how the site looks and functions when someone in this jurisdiction interacts with it”
“No doubt users in the UK and elsewhere in the EU could and did access the site but all indications on it show that from the time when it started until sometime approximately in 2012 the Facebook postings were not targeted to the EU or UK. The language was US English, the currency was US dollars, no telephone numbers appear directly but the Facebook page links to the L Brands’ US website with US telephone numbers. The vast majority of the content refers to US college type events at US universities. In addition to the events at US universities, the content referred to US store openings, sales for US specific holidays and posts in support of the US Olympics team.”
“First, does metatag use count as use of a trade mark at all? In this context it must be remembered that use is important not only for infringement but also for saving a mark from non-use. In the latter context it would at least be odd that a wholly invisible use could defeat a non-use attack. Mr Hobbs suggested that metatag use should be treated in the same way as uses of a trade mark which ultimately are read by people, such as uses on a DVD. But in those cases the ultimate function of a trade mark is achieved – an indication to someone of trade origin. Uses read only by computers may not count – they never convey a message to anyone.”
“When it comes to construing a word used in a trade mark specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade. After all a trade mark specification is concerned with use in trade.”
“definitions of services … are inherently less precise than specifications of goods. The latter can be, and generally are, rather precise, such as ‘boots and shoes’. … In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”
“Class 35 includes mainly services rendered by persons or organizations principally with the object of: 1. help in the working or management of a commercial undertaking, or 2. help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services. This Class includes, in particular: … — services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio. …” — services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio. …”
“All services listed in the class heading of Class 35 are aimed at supporting or helping other businesses to do or improve their business. They are therefore in principle directed at the professional public. … Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. Examples of advertising services are rental of advertising time on communication media, telemarketing services, marketing, public relations and demonstration of goods, since they are all intended to promote other companies’ goods/services albeit via different means. … The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, advertising is generally dissimilar to the goods or services being advertised. The same applies to the comparison of advertising services versus goods that can be used as a medium for disseminating advertising, such as DVDs, software, printed matter, flyers and catalogues.”
“91. Since the course of trade provides a varied offer of goods and services, the proprietor of a trade mark may have not only the objective of indicating, by means of that mark, the origin of its goods or services, but also that of using its mark for advertising purposes designed to inform and persuade consumers. 92. Accordingly, the proprietor of a trade mark is entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with its trade mark in relation to goods or services which are identical with those for which that trade mark is registered, in the case where that use adversely affects the proprietor’s use of its mark as a factor in sales promotion or as an instrument of commercial strategy.”
“60. In addition to its function of indicating origin and, as the case may be, its advertising function, a trade mark may also be used by its proprietor to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. 61. Although that function of a trade mark—called the “investment function”—may overlap with the advertising function, it is nonetheless distinct from the latter. Indeed, when the trade mark is used to acquire or preserve a reputation, not only advertising is employed, but also various commercial techniques. 62. When the use by a third party, such as a competitor of the trade mark proprietor, of a sign identical with the trade mark in relation to goods or services identical with those for which the mark is registered substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty, the third party’s use must be regarded as adversely affecting the trade mark’s investment function… 63. In a situation in which the trade mark already enjoys such a reputation, the investment function is adversely affected where use by a third party of a sign identical with that mark in relation to identical goods or services affects that reputation and thereby jeopardises its maintenance… 64. However, it cannot be accepted that the proprietor of a trade mark may—in conditions of fair competition that respect the trade mark’s function as an indication of origin—prevent a competitor from using a sign identical with that trade mark in relation to goods or services identical with those for which the mark is registered, if the only consequence of that use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. Likewise, the fact that that use may prompt some consumers to switch from goods or services bearing that trade mark cannot be successfully relied on by the proprietor of the mark.”
“…the primary function of a mark is unquestionably that of an “indication of origin” (see the seventh recital in the preamble to Regulation 40/94). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth. To that effect the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor.”
“In our judgment the onus lies on the trade mark proprietor to establish that the advertisement complained of does not enable normally informed and reasonably attentive Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the advertisement originate from the trade mark proprietor or an undertaking economically connected to it or, on the contrary, originate from a third party.”
“155. In either case [i.e. in both Article 9(1)(a) and Article 9(1)(b)] it must be shown that the advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the trade mark proprietor or an undertaking economically connected to it or, on the contrary, originate from a third party. Of course, Article 5(1)(a) and Article 9(1)(a) also afford protection against use in this way of a sign identical to the trade mark if that use is liable adversely to affect one of the other functions of a trade mark, as the Court elaborated in its decision in Interflora (CJEU) [2012] Bus LR 1440. 156. These tests have been formulated by the Court with great care and reflect the importance of trade marks in developing a system of undistorted competition whilst recognising that their purpose is not to protect their proprietors against fair competition. Moreover, the Court has acknowledged that internet advertising on the basis of keywords corresponding to trade marks is not inherently objectionable because its purpose is, in general, to offer to internet users alternatives to the goods or services of the trade mark proprietors. The tests enunciated by the Court therefore incorporate appropriate checks and balances. In particular, the national court is required to consider the matter from the perspective of the average consumer, a concept we have discussed, and to decide whether the advertiser has enabled that average consumer to ascertain the origin of the advertised goods or services and so make an informed decision. We would emphasise it is not the duty of such advertisers to avoid confusion.”
“The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.”
“39 As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so. 40 As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark. 41 As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation. 42 Just one of those three types of injury suffices … 43 It follows that an advantage taken by a third party of the distinctive character or the repute of the mark may be unfair, even if the use of the identical or similar sign is not detrimental either to the distinctive character or to the repute of the mark or, more generally, to its proprietor. 44 In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them. 45 In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark … 49 In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.”
“It is not sufficient to show … that [the defendant] has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. … No additional factor has been identified in this [case] (other than intention).” (6) To similar effect, in Specsavers, Kitchin LJ said at [127]-[128]: “[127] The Court may reasonably be thought to have declared, in substance, that an advantage gained by a trader from the use of a sign which is similar to a mark with a reputation will be unfair where the sign has been adopted in an attempt to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, and without making efforts of his own, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image … [128] But plainly there are limits to this broad principle …”
“34. … its use of “tesco” related domain names infringed Tesco’s three trade marks, contrary to section 10(2) of [theTrade Marks Act 1994 ]; and I also consider that Elogicom’s use of those domain names infringed Tesco’s three trade marks, contrary tosection 10(3) of the Act , in that Elogicom used the domain names in the course of its trade in relation to services, they were similar to Tesco’s trade marks, Tesco’s trade marks had a reputation in the United Kingdom and … its use of those domain names was “without due cause” and took “unfair advantage of” the distinctive character and the repute of Tesco’s trade marks. In my view, Elogicom took unfair advantage of the Tesco brand, reflected in its trade marks, by using the word “tesco” in its domain names specifically with the object of trading on and benefiting from Tesco’s reputation with the general public, by capturing part of the traffic of persons browsing the internet and entering Tesco related names in the address bars on their computers in the hope of being taken to Tesco websites, and then obtaining payment of commission from Tesco via TradeDoubler in relation to that traffic. Moreover, on the authority of the Court of Appeal’s decision in British Telecommunications Plc v One in a Million Ltd[1999] FSR 1 , it seems to me that the situation which Elogicom brought about would also fall to be regarded as detrimental to the distinctive character or the repute of Tesco’s trade marks, within the meaning of section 10(3), since the following observation of Aldous LJ at p25 would apply: “The domain names were registered to take advantage of the distinctive character and reputation of the marks. That is unfair and detrimental.” … 52. In my judgment, there is no doubt that Elogicom by its registration and use of the “tesco” related domain names, has sought to associate itself with and trade upon the considerable goodwill which attaches to the name “Tesco” for the benefit of Tesco. There is also no doubt that Elogicom continues to threaten to make use the Tesco name, so damaging Tesco’s goodwill, both by retaining those domain names with the option of starting to use them again at some point in the future and by virtue of maintaining their registration against Elogicom’s name in the register. Therefore, for the same reasons as I have given above in relation to Tesco’s trade marks claim and by application of the principles in One in a Million, Tesco is entitled by way of summary judgment to the quia timet injunctive relief which it seeks on this basis also.”
“[45] … the concept of ‘due cause’ may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation. [46] Thus, the concept of ‘due cause’ is intended, not to resolve a conflict between a mark with a reputation and a similar sign which was being used before that trade mark was filed or to restrict the rights which the proprietor of that mark is recognised as having, but to strike a balance between the interests in question by taking account … of the interests of the third party using that sign. In so doing, the claim by a third party that there is due cause … obliges the proprietor of the mark with a reputation to tolerate the use of the similar sign … [60] … the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ …, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of: - how that sign has been accepted by, and what its reputation is with, the relevant public; - the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and - the economic and commercial significance of the use for that product of the sign which is similar to that mark.”
“In this regard, in order to determine whether the use of the sign similar to the mark with a reputation was in good faith, it is necessary to take account of the degree of proximity between the goods and services for which that sign has been used and the product for which that mark was registered, as well as to have regard for when that sign was first used for a product identical to that for which that mark was registered, and when that mark acquired its reputation.”
“[74] For its part, the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as, inter alia, ‘free-riding’, relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation (L’Oréal at [41]). … [91] By contrast, where the advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward—without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark concerned—an alternative to the goods or services of the proprietor of the trade mark with a reputation, it must be concluded that such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned and is thus not without ‘due cause’ for the purposes of Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation 40/94.”
“A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address provided he uses them in accordance with honest practices in industrial or commercial matters.” provided he uses them in accordance with honest practices in industrial or commercial matters.”
“[I]n principle an individual ought to be able to use the defence in relation to an adopted name by which he or she is known … That being so, I find it difficult to understand why a corporate entity should not be able to do so, if it can show that it uses a distinct name for trading purposes. … In my judgment the Article 12(a) defence may be available in respect of a trading name, as well as the corporate name of a company, but it will depend on (a) what the trading name is that has been adopted; (b) in what circumstances it has been adopted; (c) depending on the relevant circumstances, whether the use is in accordance with honest practices.”
“it will be relevant to consider, among other things, whether there exists a likelihood of confusion; whether the trade mark has a reputation; whether use of the sign complained of takes advantage of or is detrimental to the distinctive character or repute of the trade mark; and whether the possibility of conflict was something of which the defendant was or ought to have been aware. The national court must carry out an overall assessment of all the circumstances and determine whether the defendant is competing unfairly.”
“… an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices: see Gillette at [49], Anheuser-Busch at [83] and Céline at [34].”
“9. Indemnification. Customer shall indemnify and defend Google, its Partners, agents, affiliates, and licensors from any third party claim or liability (collectively, “Liabilities”), arising out of Use, Customer's Program use, Targets, Creative and Services and breach of the Agreement. Partners shall be deemed third party beneficiaries of the above Partner indemnity.” (2) The 2009 terms are governed by English law (see Clause 20). Clause 11 of the 2009 terms provides: “11. Indemnity. Customer shall indemnify and defend Google, its agents, affiliates, directors, officers, employees and Partners (“Google Indemnified Persons”) from and against any claims, losses, liabilities, expenses, damages and settlement amounts (including legal fees and costs) incurred by any Google Indemnified Person(s) arising out of Customer's breach of clauses 3.3, 3.4, 3.5, 7 and/or 10 of these Terms. These indemnification obligations shall exist only if Google: (i) promptly notifies the Customer of any claim; (ii) provides Customer with reasonable information and cooperation in defending the claim; and (iii) gives Customer full control and sole authority over the defence and settlement of such claim. The Google Indemnified Persons may join in the defence with counsel of its choice at its or their own expense.” (3) The 2013 terms are governed by English law (see Clause 12(a)). Clause 10 of the 2013 terms provides: “10 Indemnification. Customer will defend, indemnify and hold harmless Google, its Partners, agents, Affiliates, and licensors from any third party claim or liability arising out of or related to Targets, Creative, Destinations, Services, Use and/or breach of these Terms by Customer. Partners are intended third party beneficiaries of this Clause.”
“(1) Subject to the provisions of this Act, a person who is not a party to a contract (a ‘third party’) may in his own right enforce a term of the contract if — (a) the contract expressly provides that he may, or (b) subject to subsection (2), the term purports to confer a benefit on him. (2) Subsection (1)(b) does not apply if on a proper construction of the contract it appears that the parties did not intend the term to be enforceable by the third party. (3) The third party must be expressly identified in the contract by name, as a member of a class or as answering a particular description but need not be in existence when the contract is entered into. … (5) For the purpose of exercising his right to enforce a term of the contract, there shall be available to the third party any remedy that would have been available to him in an action for breach of contract if he had been a party to the contract …” (a) the contract expressly provides that he may, or (b) subject to subsection (2), the term purports to confer a benefit on him. …”
“It has long been the law that the correct approach is to consider whether, as Lord Cranworth LC put it in Seixo v Provezende (1865-66) LR 1 Ch App 192 at p 196, ‘ordinary purchasers, purchasing with ordinary caution, are likely to be misled’. No claim for passing off lies if, as Foster J famously observed in Morning Star Co-Operative Society Ltd v Express Newspapers Ltd[1979] FSR 113 at 117, ‘only a moron in a hurry would be misled’. … Thus English passing off law requires the court to consider whether ordinary consumers who purchase with ordinary caution and who know what is fairly common to the trade are likely to be misled.”
“A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant’s goodwill or divert trade from him. I emphasise the word ‘really’.”