B e f o r e :
THE HONOURABLE MR JUSTICE
PUMFREY
____________________
Between:
|
(1) REED EXECUTIVE PLC |
|
|
(2) REED SOLUTIONS PLC |
Claimants |
|
-and- |
|
|
(1) REED BUSINESS INFORMATION
LIMITED |
|
|
(2) REED ELSEVIER (UK)
LIMITED |
|
|
(3) totaljobs.com LIMITED |
Defendants |
____________________
Geoffrey Hobbs QC and Emma Himsworth (instructed by Slaughter &
May) for the claimants
Martin Howe QC and Amanda Michaels (instructed by dj
freeman) for the defendants
Hearing dates: 15-18, 21, 22 January, 6 and 7
February 2002
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HTML VERSION OF JUDGMENT
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Crown Copyright ©
Mr Justice Pumfrey:
INTRODUCTION
- This is an action for infringement of registered
trade mark and passing off. The centre of the dispute is a website whose
domain name is www.totaljobs.com ('totaljobs.com') which is now run by
the third defendant but was originally made available by the first and second
defendants ('RBI' and 'Reed Elsevier').
- The registered trade mark in suit consists of the
word 'REED' alone. It is registered under number 1296450 as of 23 December
1986 in respect of 'Employment Agency Services, included in Class 35'. The
second Plaintiff ('Reed Solutions') is the registered proprietor of the mark.
There is no challenge to the validity of the registration. I shall refer to
the first claimant as 'Reed Solutions' and, where necessary I shall refer to
them and the other members of the group of which they form part as 'Reed
Employment'. I shall call the defendants RBI and Reed Elsevier.
- It is suggested that the claimants sue in passing
off as representatives of the other members of the group of companies of which
the claimants form part. This may be correct: the defendants make no challenge
to it and I shall not pursue it further. I merely observe that if the
claimants' group of companies benefits from a common goodwill, to sue as
representatives is permissible, but if there are distinct goodwills relevant
to different areas of activity it is probably necessary to join all the
relevant parties. But this does not matter here.
- Totaljobs.com is a website which has changed fairly
rapidly since its launch. The word REED was used initially as part of the
combinations 'Reed Elsevier' and 'Reed Business Information' on the website,
both to indicate the origin of the website and as an indication of the
copyright owner. The word REED also appeared in the 'source code' of the
website as one of a list of 'metatags' which, although not readable by any
human consulting the website, had certain effects which I shall have to
describe in detail. The various steps taken to make the website more visible
to people surfing the net for jobs, generally described as 'search engine
optimisation' were investigated in exhaustive detail at the trial.
- The defendants have taken steps to remove REED from
the website, both were visible to humans and elsewhere. This they have done,
the claimants say, far too slowly, with the result that they have acquired a
goodwill in part by trade mark infringement and by passing off.
- While use of the word REED on the totaljobs.com
website is at the centre of the dispute between the parties, there are various
subordinate disputes, which largely arise out of confusion between the
claimants and the defendants which has led journalists, chiefly, to indicate a
connection between totaljobs.com and the claimants which does not exist.
- Finally the claimants object to certain particular
activities of the defendants on the World Wide Web ('WWW'). These activities
are completely distinct from the issues relating to the content of the
defendants' own website, and consist of contracting with various search
engines to display either banner advertisements for the defendants or 'fake'
search results specifying totaljobs.com when a user of the search engine in
question types in certain words reserved by the defendants. In one case, on
one engine, the word 'REED' was reserved. In other cases, the defendants have
paid to have their banners or 'fake' search results displayed when the user
types in the words like 'jobs, job vacancies, jobsearch, cv, employment
agencies, curriculum vitae, jobs uk, job centre, job agencies, employment
agency, recruitment agencies, graduate recruitment, or recruitment'.
THE ISSUES IN THE ACTION
- The issues in the action can be summarised as
follows:
i) Is the scope of the claimants' registered trade mark
sufficiently wide to cover the defendants' provision of services through the
medium of totaljobs.com? The claimants contend that this is an 'identical
goods, identical mark and sign' case falling within sub-section 10(1) of the
Trade Marks Act 1994. The defendants contend that the specification of
services (employment agency services, within class 35) is insufficiently
wide to catch the services provided by them.
ii) If there is no infringement under sub-section 10(1) of the
1994 Act, whether the marks and/or services are 'similar' within the meaning
of sub-section 10(2).
iii) Whether there is a relevant likelihood of confusion capable
of satisfying sub-section 10(2).
iv) Although there is no challenge to the existence of a
substantial trading good-will which belongs to the claimants, the defendants
contend that the nature of that goodwill is not such that their use of the
word REED, in the context in which it is used, will make a relevant
misrepresentation to the interested public resulting in damage to that
goodwill. This issue traverses much of the same ground as the issues arising
under sub-section 10(2) of the 1994 Act, for reasons I shall
explain.
v) Whether the defendants have a defence under section 11(2) of
the 1994 Act in respect of their use of the word REED, if it would otherwise
infringe or result in passing off. This involves questions which in all
probability will necessitate a reference to the European Court of Justice at
some stage.
vi) Whether the defendants have a defence under the transitional
provisions of the 1994 Act. The Act came into force on 1 November 1994, and,
so far as any acts now done by them were also done without infringement
before that date, the defendants contend that they have a defence. This is,
in fact, an argumentative point, whose principal purpose is to point up what
the defendants say is the real nature of their website, which is to function
as an electronic analogue of the job advertisements to be found in many of
their publications. I shall not consider it separately.
vii) Whether the claimants have any legitimate complaint in
respect of the optimisation of the defendants' website.
viii) Whether the claimants have any legitimate complaint in
respect of the other WWW-based promotional techniques employed by the
defendants.
THE CLAIMANTS
- Mr Alec Edward Reed ('Alec Reed') founded Reed
Employment in 1960. He rented his first shop from a friend. It was in
Hounslow. He worked by advertising for secretarial and clerical workers. When
he had replies to his advertisements, he telephoned around the people who were
advertising for staff ('clients'), and put them in contact with the people
seeking jobs ('candidates'). In 1961 he started Reed Executive, which
initially specialised in the recruitment of accountants. As the business has
developed and changed, the word REED has been used as part of the trading name
of the business with a descriptive part, and now includes Reed Employment,
Reed Graduates, Reed Accountancy Personnel, Reed Learning, Reed Training, Reed
Personnel, Reed Technical Personnel and Reed Industrial Personnel. There are
associated training businesses—Reed Training and Reed Business School. The
corporate structure of the group of companies which conduct these businesses
is not entirely straightforward and does not matter for the purpose of these
proceedings.
- The business carried on by the claimants has a
number of defining characteristics, which I discuss below.
- The business was a High Street business until the
advent of reed.co.uk. As Mr Reed puts it,
'Even in the 1960s, my company expanded rapidly. An important
part of our strategy was to secure prominent, prime site locations to
attract the best candidates for our clients and to develop a distinctive
brand on the High Street. This strategy has continued through the years and
each year my company invests considerably in procuring prime retail sites
for its branches.'
He emphasises the importance to the claimants of the siting of their
branches, and the prominent use of REED on their fascia. This use has been
continuous, although the graphic style and detail has varied over the years.
It is plain that the claimants rely heavily upon REED to identify their High
Street Branches.
- The business has two aspects. One is the provision
of temporary staff. The other is the introduction of candidates to clients. Mr
Owen-Ward describes this service in detail in his evidence. The basic service
provided to candidates is to match them to vacancies. The candidate will be
offered jobs that he or she has applied for and other jobs which are
considered to be best suited to the candidate's skills and experience. Central
to this is the candidate interview. The claimants set particular store by the
skills of their interviewers, who are called consultants. Mr Owen-Ward says
'A candidate's main concern when they approach Reed Solutions or
Reed Personnel Services is whether Reed can find them a job. Our role is to
place them in the most appropriate position, matching the candidate's skills
to those required by the client. Personal interaction between the client,
the candidate and the consultant is therefore essential to ensure that the
right person is placed in the right job. The matching process requires time
and skill and is carried out by Reed consultants who are trained and
experienced in conducting this process ... Candidates are generally given
interviews and assessment sessions by Reed consultants in which their skills
and requirements for further training identified ...'
- Interviewing is not inevitable. Thus if a fully
qualified candidate for a particular position applies then he or she may be
passed straight on to the client. But the interview is a standard component of
the service provided by the claimants to candidates, as is the supply of
candidates whose capacity for the available post has been assessed to the
client. It was clear that the incidence of interviewing was very high. By way
of example, a recent brochure produced for clients for office workers says
that the claimants' 'highly experienced recruitment consultants interview each
candidate' and it is clear that this is a very important part of the service.
- The claimants' website, reed.co.uk, is used by
both clients and candidates. It provides a source of candidates, and nowadays
all candidates who approach a branch in the first instance are encouraged to
register with the website.
- The claimants' core business is thus what it
always has been, the marrying of suitable candidates to available vacancies.
Important in this process is the assessment of the candidate. Around this core
other services have accreted over the years and from its origins in office
work and accountancy the range of vacancies and candidates catered for has
expanded enormously. The provision of temporary staff is, of course, a
complementary business. It is necessary to record it since fifty percent of
the claimants' business is, according to Mr Alec Reed's evidence, in the field
of temporary staff. Thus the goodwill of the claimants extends well beyond the
provision of ordinary employment agency services and the name REED in this
field is associated with the provision of temporary staff as well. This
reputation will subsist both with the clients, who need the temporary staff,
and the staff themselves, who recognise the claimants by the name Reed as a
potential source of temporary placements.
THE DEFENDANTS
- The defendants have a long history in publishing.
RBI is the successor to IPC Business Press Limited, which itself had distant
origins in Kelly's Directories, Thomas Skinner, Iliffe & Sons and the
Temple Press. These were publishers of specialist magazines and journals.
These publishers eventually united in 1961 under the auspices of the Daily
Mirror Group when it acquired Odhams Press. Ultimately the specialist
publications business was taken over by IPC Business Press Limited in 1969.
The Reed name has its origin in the paper business. In 1969, the Reed
papermaking group, in which IPC had an interest, acquired the magazine
publishing businesses which were separated into IPC Magazines and IPC Business
Press. The latter became Reed Publishing and eventually acquired the business
of the former, and is now the first defendant, a member of the group of which
the second defendant is the principal operating company in the United Kingdom.
As I understand the evidence, the publishing business has been carried on
under names including the word REED from about 1983, although the publishing
companies had been subsidiaries of Reed International Limited since about
1972.
- The word REED, as it is now used by the defendants
on their paper publications, is generally used either as part of the Reed
Business Information Logo alone or with the usual information which relates to
the publisher. It also appears in the copyright line. For example, the well
known magazine New Scientist contains the Reed Business Information logo and
contains the statement that it is published weekly by Reed Business
Information Ltd. There is some evidence of other similar logos (for example,
Reed Healthcare) but nothing turns on this. This is the logo with which I am
concerned:
.png)
- There is also a logo used by Reed Elsevier which
is relevant. It consists of a stylised pair of letters 're' and the words Reed
Elsevier, not dissimilar in layout to the RBI logo.
- Before and after the arrival of the World Wide
Web, Reed Publishing has published many titles of sectional interest in both
the manufacturing and service areas of the economy. The evidence is that it
now publishes fifty or so titles and runs 29 websites. The publications
include Estates Gazette, Caterer & Hotelkeeper, Electronics Weekly, Flight
International, Hospital Doctor, New Scientist, Motor Trader, and Personnel
Today. I understand that these are Reed Publishing's lead publications in
their respective sectors, and associated with them are other 'products', which
may include more specialised magazines, fairs, yearbooks, websites and so on.
An important part of each of these publications is the jobs section, and some
of them indeed carry little editorial matter, consisting largely of
recruitment advertising. This advertising may be placed on behalf of the
client, or of an agency.
- Reed Publishing are not so well known to the
public that it is not necessary for them to explain to the public who they
are, their size, and the publications with which they are associated. The fact
that their products and services are generally provided under brands
well-known in their own right no doubt accounts for this, and it may also to
some extent account for the fact that both Reed Publishing and Reed Employment
recognise that there is a continuing degree of confusion between them among
the general public, and, in particular, among the public who may well wish
either to approach Reed Employment for a job or look at totaljobs.com with the
same end in view. Mr Ivory, the Executive Producer of totaljobs.com since June
200, said this:
'11.1 Before I joined totaljobs I was confused as to the
precise relationship between Reed Elsevier and the claimants. Reed Elsevier
is known through the media as "Reed" and I wasn't sure whether the claimants
and Reed Elsevier were connected. I even asked the question, "Are Reed
Elsevier and Reed Employment anything to do with each other?" at my
interview for my position at totaljobs.
11.2 The reason my eye was brought to this was because I was
researching RBI before my interview and I wanted to find out if Reed
Elsevier, who I knew owned RBI, also owned the claimants. I knew RBI were
involved in the publications industry and that they offered recruitment
advertising services and I knew of the claimants through the High Street
Shops. I wanted to establish if the claimants were another Reed Elsevier
brand and I remember my research showed me that Reed Elsevier did not own
the claimants but I did bring the topic up at my interview for further
clarification.'
- Mr Sissons, a director of RBI, says this:
'It is my experience that individuals in the street, job seekers
for example, sometimes form a wrong association between RBI and the
claimants. This has always been the case for the simple reason that first,
both companies are known as "Reed" (and always have been) and second, that
both organisations offer recruitment services.'
Mr Kelsey, the Chief Operating Office of RBI, also recognises the existence
of confusion:
'It is my strong belief based on having worked for RBI (and
formerly Reed Business Publishing) for the past 18 years that there has
always been a false association or belief that there is a corporate
relationship between RBI and the claimants. The question "are you anything
to do with the high street chain of employment agencies" has been asked not
infrequently over the years. The fact is, we share the same name. However, I
am not aware of a single customer who, when dealing with RBI, thought that
they were dealing with the claimants. The reality is that the claimants and
RBI have co-existed quite happily for many years ...'
- To anticipate, when two traders with confusingly
similar marks operate in fields which are sufficiently different that neither
substantially affects the other (or shows up on the other's radar, to use a
metaphor employed by one of the witnesses) it goes without saying that if one
of them expands its activities with the result that there could be a risk that
what was previously mere confusion becomes deception causing damage to
goodwill there is a positive duty upon that trader to take such steps as may
be necessary to reduce that risk to zero. That is what the greater part of
this case is about.
- The evidence is that the advent of widespread
access to the world wide web fundamentally changed the economics of
advertising, and in particular the economics of advertisements which are
actively sought by those to whom they are addressed, such as jobseekers. It is
cheaper to place an advertisement on the web than it is to publish it in a
magazine. In the middle 1990's the first stand-alone recruitment advertising
sites ('Monster' and 'Stepstone') appeared and Mr Kelsey's evidence was that
these 'job boards' directly competed with traditional print media. At this
time, the evidence is that the revenue generated by RBI's recruitment
advertising began to fall, and Mr Kelsey said that it was expected to continue
to do so. By October 1996, RBI were able to identify recruitment on-line
services as a key area on the web, as traditional publishers moved into
on-line services and new ones entered. Thus, Reed Publishing decided to move
into recruitment advertising on the web. Unsurprisingly their first attempt
was with Computer Weekly, which they considered to be the market leader in the
sector for jobs in the IT field.
THE HISTORY OF TOTALJOBS.COM
- totaljobs.com is a website. In principle, a
website consists of some hardware (a computer) and software (a web server)
which transmits various files upon request over the internet to other
computers which are equipped with a program (called a browser) which can
interpret and display the files which are transmitted to them. These files
contain so-called links, which if activated by the user of the browser cause
it to transmit a request to the server for some other file. That file may be
resident on any machine which has such a server. The files available to a
particular server when that server is addressed by a particular 'Universal
Resource Locator' or URL (like http://www.courtservice.gov.uk/) make up the
'source code' of the web site. Like everything to do with computers, the files
are written in a language which it needs experience to understand, and
included with them will be other files consisting of pictures, photographs,
and so on which will eventually be displayed in the user's browser.
- The ease with which the source code may be edited
means that it is comparatively straightforward to change a website, even from
day to day. totaljobs.com went through seven versions in the time with which I
am concerned.
VERSIONS 1 AND 2 OF TOTALJOBS.COM
- On 29 July 1999, RBI sent a brief to the
advertising agency CDP which sought a plan for the creation of the 'leading
horizontal United Kingdom based recruitment site within 12 months.' The budget
was substantial, and an idea of the context in which RBI saw themselves
operating may be gleaned from the introductory description of the background:
'Reed Business Information is the leading business to business
media owner covering 17 business markets and over sixty core titles
including leading magazines such as New Scientist, Computer Weekly, Estates
Gazette, Caterer & Hotelkeeper, Flight International and Community
Care.
Recruitment advertising currently represents a key revenue
stream for RBI. The company has recognised that the internet will play an
increasingly important role in recruitment advertising and as a result is
committed to developing market leading sites.
RBI currently has a number of excellent recruitment web sites,
operating within vertical markets such as "@Computer Weekly" in the IT
sector and 'New Scientist jobs" in the science sector. The company has just
announced large scale plans to operate in the horizontal job market place
with the launch of totaljobs.com.
This is an internet portal which will advertise jobs in these
vertical markets, as well as in those markets RBI does not have an existing
web presence such as Catering, Construction and Human Resources.
RBI has ambitious plans to make totaljobs.com the leading
UK based Recruitment Web site by offering access to thousands of vacancies
across additional industry sectors not currently covered by either its
magazines or Web sites, by working with its parent company Reed Elsevier,
forming strategic alliances with other organisations and launching new sites
within these vertical markets.'
- A first version (version 1) of the website had
been started a month or so before this brief was written. This website was not
actively promoted, but it contained links to existing jobs websites associated
with RBI publications and directly used the jobs databases of these websites.
The only reproduction showing the appearance of this website with which I have
been provided is a poor print of the home page, but a number of points can be
made:
i) Its name is clearly totaljobs.com. This appears prominently
at the top of the page, above a notice stating that
'Totaljobs.com will be fully operational by the end of August.
In the meantime please be patient if there are some intermittent problems
with the functionality and do keep coming back regularly as we will be
adding more exciting features on a regular basis.'
ii) Two logos, the Reed Elsevier logo and the RBI logo appear
prominently below the notice, and next to the latter is a suggestion that
potential advertisers should contact RBI.
iii) For the jobseeker there is a scrolling list of job
categories to select, and the usual GO button.
iv) On the right of the page is a column of additional features
entitled 'career advisor', 'information' and 'links'. Under 'career advisor'
there are two links labelled 'Drafting a successful CV' and 'Writing a good
Application Letter'. Under 'information' there is advice on how to recruit
using totaljobs.com and help on using the site. Under 'links' two buttons
are labelled 'About Reed Business Information' and 'Subscribe to Reed
Business Information magazines'.
vi) At the bottom of the page there is a banner
advertisement.
- It seems to me clear that Version 1 would appear
to the user as a Reed Business Information website. Although the title of the
site is clear enough, the references to Reed Business Information as both the
contact point, as the supplier of magazines to which a subscription may be
purchased and as the subject of the 'about ...' make this conclusion
inevitable.
- This version of the website appears to have been
the version considered in a 'usability evaluation' dated 8 September 1999
carried out by Serco Limited. The site was evaluated by twelve selected
participants, who were recorded on video as they used the site following
instructions give to them. As they understand the site they were asked
questions designed to find out the extent of their understanding of what they
were seeing. The analysis is very detailed. The third bullet point in the
executive summary is
'Users were not really sure about what the site was or where the
jobs came from and this affected their expectations and their trust of the
information provided. Some users assumed a link with Reed
Employment.'
- The detailed study referred to the links under
'Career advisor' as creating the problem with Reed Employment:
'[paragraph 4.12.1] ... One participant expected these links
would be an opportunity to contact a "real advisor" - perhaps an inference
from assumption that the site is from Reed Employment?
4.12.1a Creating a successful CV
Some participants had initial impressions that this link would
provide an opportunity for uploading a CV to Reed, which is likely to be
related to their impression of the site a being related to Reed Employment.
Although most revised their opinions as they explained their expectations,
this initial impression may linger in real world use where users are not
being asked to explain their assumptions.
....
4.12.3 Links
Participants generally did not know what to expect from the link
to Elsevier:
• "presume it's the web
designers"
•"don't know what that is - it might be the parent
organisation"
•"why is that there? I'm not really interested in
this."
•"no idea"
One participant followed the link to Elsevier and became
completely lost.
Some participants thought the RBI link on the left of the home
page would be identical to the text link in the right side of the page, but
some were confused about what this was and why it was there. Most seemed to
understand that RBI were the owners of the site, but thought they were part
of Reed Employment.
...
4.13.1 Site purpose
There was a general impression that the site was provided by
Reed Employment and this set expectations for the type and quantity of jobs
that would be present on the site.
Even participants who did not link Totaljobs to Reed Employment
thought that the site was provided by an agency. One participant, a
recruitment consultant, was very surprised to see direct contact information
being displayed: "I have never seen a site giving company information
away.".
Some participants expected the site would provide them with
access to recruitment consultants, and this was most evident in their
expectation of being able to specify their skills and requirements, and that
CVs would be submitted to an agent who "who won't even put you forward if
you're not suitable."
We expect that this perception is almost certainty due to
association with the high street Reed Employment brand, perceptions of other
job sites and the absence of any information on the TotalJobs site to set
expectations for the users. As one participant put it: "there's nothing
here to say what it is.".'
- I have quoted this document at length because it
is heavily relied on by the claimants and because it brings out a number of
important features of this case in what I consider to be an intelligent
manner. These features may be summarised as follows. First, the reported
behaviour of the users of Version 1 of the website demonstrates that the
claimants enjoyed a strong reputation. Second, that reputation is associated
with a service which includes matching qualifications to available vacancies
through the medium of some kind of advisor. This comes through strongly in the
reference to someone who 'won't put you forward if you're not suitable'.
Third, there is some suggestion, but only a suggestion, that some people at
least consider that an employment agency offers such a service, and also
conceals potential employers from the candidates. Finally, and this is quite
clear, that the strength of the claimants' reputation was such that mere use
of the RBI or Reed Elsevier logos without more was wholly insufficient to
avoid confusion and potential deception, and that it would obviously be
necessary if deception and confusion were to be prevented to avoid any use of
the word 'Reed' in a manner which would be likely to encourage the confusion.
- This study led to a redesign of the home page. The
redesign was referred to as Version 2. Version 2 removed the RBI and Reed
Elsevier logos. It included a copyright line, in the form 'Copyright Reed
Business Information 1999'. It is unfortunate that the copy of the site in the
bundles is so bad that the text can hardly be discerned, but in a copy of the
home page contained in some supplementary documents prepared for trial by the
defendants which was not referred to it is clear that against a graphic of two
men talking across a desk there appears the following text:
'Don't worry, sir, there's something for everyone at
totaljobs.com home to total jobs the brand new online jobs service from Reed
Business Information, the leading [indistinct]'
- This text was not, as far as I can see, the
subject of any evidence, so I merely record it. This alteration to the
website, which was at this stage still not actively advertised either on the
internet or otherwise, could not possibly have reduced the confusion and
potential deception which I have described.
- Version 2 of the site was a considerable advance
towards a working site. It included for the first time its own jobs database
which was derived from all the other magazine website databases. The
facilities were otherwise similar to those provided by Version 1. The site was
current from October 1999 to January 2000 when it was replaced by version 3
and consumer advertising began. During this time some two million 'page
impressions' were recorded for the site. A 'page impression' is recorded when
the code for a page in the site is transmitted to a user's browser. Thus these
records for the site are for all the pages, and thus may well have included
many eager candidates looking mainly at pages other than the home page. But
the usage of the site cannot on any view be described as negligible, although
it is very small compared with later figures when the site was promoted in the
manner which I shall describe below.
THE 1999 HARROGATE SHOW
- Every year since 1972 the Chartered Institute of
Personnel and Development has run a national conference and exhibition at
Harrogate. The evidence is that this is an important annual event for those
concerned with recruitment and training and human resources more generally,
and the conference consists of lectures concerning current issues in this
field. The associated exhibition is an opportunity for organisations trying to
sell products and services to this sector. The Harrogate conference is
attended by recruitment media, consultancies, advertising agencies and (more
recently) those responsible for recruitment websites. Mr Reed said it was
attended by 'middle management personnel people'. RBI has been represented at
the conference for eighteen years. Mr Sissons, a director of RBI and the head
of RBI Recruitment, says that the main point of the stand at Harrogate is to
promote RBI's recruitment services and related products across the range.
- At the time that Version 2 of the site went
on-line, the Harrogate conference was taking place. The RBI magazine
'Personnel Today' was the principal RBI stand. There were two other stands
from Salary Survey Publishing and Computer Weekly. There was also a stand for
RBI Recruitment Services. The last was 'themed', that is, it borrowed
identifying features from a popular television programme. In 1998, the these
was a 'RBI Kabin' inspired by the newsagents in 'Coronation Street'. To help
promote the stand a member of the cast of the programme attended the stand. In
1999, the theme was 'Changing Jobs' again loosely based on the television
programme called 'Changing Rooms', one of a number of popular interior design
and decoration programmes. The stand (B56) was decorated as a room, and on the
walls the names of all the claimants' publications appeared. There was a
second stand for totaljobs.com, which also displayed the RBI logo. This stand
was distinct from the 'Changing Jobs' stand. It appears to have been part of
the 'Personnel Today' stand (B60).
- Mr Alec Reed said in evidence that he was alarmed
by the way in which the defendants had presented themselves at this show, and
with the clear shift in the emphasis of their activities. He said that the
words 'Changing Jobs' clearly conveyed that 'you can go to them to get another
job, not that they are selling advertising spaces.' This use of the phrase
'Changing Jobs' is relied on as reinforcing the image of the totaljobs.com
stand as providing jobs.
- The totaljobs.com stand itself makes substantial
and prominent use of the RBI logo which I have illustrated above. There is no
doubt that RBI is identified on this stand as the trade source of the services
provided by totaljobs.com. I should add that I do not accept the submission
made on behalf of the claimants that
'From [the photographs] it can be seen that the predominant
slogan on the stand B56 was "Changing Jobs with Reed Business Information".
The message was clear: people wishing to change jobs (ie. Jobseekers) were
going to be encouraged to do so using the totaljobs recruitment service from
Reed Business Information.'
The photographs, taken with the layout of the stands and the evidence of Mr
Collins, who had been responsible for all the stands that year, do not permit
such a finding. There was no relationship established by the stands between
totaljobs.com on the one hand and the 'Changing Jobs' stand on the other. The
slogan was used in respect of RBI's existing publications.
- There was some very slight evidence of confusion
leading to deception at the 1999 Show, but based purely upon the common use of
the name Reed. Thus Mr Whetstone, an IT Manager with the claimants gave
evidence in chief that 'at the 1999 IPD Exhibition, the nature of the
confusion of the visitors changed from one caused by the similar names of Reed
and the defendants to one based on confusion as to what Reed and the
defendants do. I say this because the visitors required more explanation to
resolve their confusion. I had to explain to them that Reed and the defendants
were totally unrelated and that they were publishers who had recently moved
into the field of recruitment services.' Under cross-examination, he said
this:
'Q. I am sorry, I am not trying to ask you that. I am just
asking you can you remember what kinds of services these visitors were
confused about more specifically than recruitment services? A. The visitors
in particular would be Reed Executive clients or they would be people that
probably were already existing clients. Some may not be. So they were
probably confused that the defendants' stand had some element of recruitment
or recruitment services implied or on show.
Q. I appreciate you are doing this from memory and it is a
number of conversations you refer to rather than a single one. A. Yes. Q.
But doing your best, nothing more specific comes to mind? A. No.
Q. Indeed, you refer to one lady you specifically remember and
you recall her using the phrase they had human resources information all
over their stand. A. Yes, I do.
Q. But you cannot elaborate more on what kind of service that
might relate to? A. No, I cannot.'
- It is not clear from looking at the stands
themselves what had prompted the observation that the defendants had moved
into recruitment services other than advertising for totaljobs.com. I shall
deal with the nature of the service offered by totaljobs.com in more detail
when I consider the question of trade mark infringement, but the 'human
resources information' to which reference is made can only be what appears in
the photographs.
- On 26 November 1999 also, RBI applied to register
the Community Trade Mark 'TOTALJOBS' in respect of 'advertising and business
information services, employment agency services and consultancy services'.
- While there had been no consumer advertising in
the conventional sense in respect of totaljobs.com until version 3 of the
website became active, in January 2000, consideration was given to raising the
profile of the site on the World Wide Web. In order to put what was done in
context, I must leave the story of the site's development to describe certain
aspects of the Web.
'OPTIMISATION' OF THE SITE - INCREASING THE TRAFFIC
- The evidence of Mr Roche, the claimants' expert,
and agreed by Mr Bloomer who gave evidence for the defendants, is the basis
for what follows. The experts were remarkably helpful and intelligent in their
approach, agreeing as much as possible. In the result, Mr Bloomer did not need
to be cross-examined, but both he and Mr Roche modified their views somewhat
in response to the other, and they were willing to deal with new matters at
short notice in a constructive matter. This was of particular importance in
dealing with the 'robots.txt' issue, which formed a distinct allegation of bad
faith against the defendants, albeit unpleaded. I was very grateful to both of
them.
- In general, a website consists of a 'home page'
and other pages. The home page is the root of the site, and is the page which
will be displayed when the user specifies the URL of the site, for example, by
typing 'http://www.totaljobs.com'. The 'http:', which stands for hypertext
transfer protocol, tells the browser that the page which is sought comes from
the Web and the 'www.totaljobs.com' is the internet address. The whole is the
URL. The other pages of the site will be available from the home page, by
clicking on links. There are many, many, websites, probably millions of them.
Their addresses are difficult to remember. So people who use the Web tend to
maintain lists of sites which they frequently use ('Favorites') and to rely
upon so-called search engines to locate others that may be of interest. Some
search engines are well known. Many people will have heard of Yahoo!, Lycos,
AltaVista and Google. The search engines are websites which will on request
return a list of other sites containing a particular word or phrase. They do
it very quickly and in order to provide this service they maintain vast
indexes of words and web pages (not merely sites) which contain them.
- The principal method of generating and maintaining
search engine indexes is by 'crawling' over the web. Programs called 'spiders'
which follow links and hyperlinks are used to analyse the contents of the web
pages and other material going to make up a site which they reach. The
resulting index of words and Web addresses (URL) are stored and used by the
search engine to locate web pages containing the specified word or words.
Spiders crawl over the web constantly, but its size is so vast, and the amount
of information accessible so enormous, that the indexes go out of date. Thus,
if a website has a particular subject its proprietor may seek to have it
included in a directory. Directories are not altered by the response of
spiders. Directories are maintained in response to application made by website
proprietors and are in effect a subject matter index to websites.
- The individual pages of a website may for present
purposes be taken to be written in an language called HTML which indicates to
the browser how the page is to be displayed. In very general terms, HTML is
made up of 'tags' which indicate what is to be displayed and its visual
appearance. Certain tags, called metatags, are not displayed by the browser
when sent to it but enable material to be placed on the page for other
purposes. One of the principal other purposes is to provide lists of words for
spiders to index. As written, these tags commence '
' followed by 'name=' and the name of the content which follows. Then
the content is introduced by 'content='. By convention, 'name=DESCRIPTION'
introduces content which contains a short description of the website, and
'name=KEYWORDS' introduces content which consists of keywords which the site
owner wishes to be indexed, so that a search specifying any one or more of
these words will return the URL of the home page of his site.
- When a user types in a search term (Mr Roche's
example is 'Boots') the search engine does not know the intention behind the
search. Is the user looking for Boots the Chemist or a list of websites
maintained by footwear manufacturers? The search engine will rank its response
to the enquiry by reference to a complex set of criteria which are closely
guarded secrets. It is important that siteowners do not become aware of the
mathematical basis of the ranking, since that would then enable them to
structure their site in such a way as to come higher in the rankings. Metatags
are susceptible to this type of abuse. There are consultants who advise on how
best to structure sites so as to come high in rankings for certain specified
search terms. Thus, were a site owner to place a rival's name in his list of
metatags, that might enable his site to appear even on an unambiguous search
for the rival's name.
THE VERSION 2 METATAGS
- I set out the version 2 metatags by way of
example:
.png)
- In Version 3, the list appears to have been much
the same.
- The evidence was that the appearance of the word
REED, albeit as part of the phrase 'REED BUSINESS INFORMATION' in the title,
description and keywords as I have set them out above would be detected by the
spider and would be inserted in the index. Its use would be likely to make the
totaljobs.com website appear if it did not contain the word REED in text form
at all, and given that the word always appeared in versions 2 and 3 as part of
the copyright message at least it would probably improve its ranking if a user
carried out a search merely using the word 'REED'. I do not believe that the
results which were from time to time obtained and put in evidence ever showed
the result of searching against REED alone. The searches relied on by the
claimants were against 'REED JOBS', which causes real difficulty because of
the inclusion of the word 'jobs'.
- Where the terms of interest are generic (jobs,
employment, recruitment and so on) site optimisation is important. There are
very many websites carrying job advertisements. It is important for a website
offering such advertisements to come as high as possible in a search against
the word 'jobs'. There is only so much that can be done with 'on-site'
techniques to affect the ratings given to a particular site. Search engines
also carry out analysis of (among other things) the number of links to a
particular site from other sites. 'Off-site' criteria such as this will give
some inkling of the site's popularity, and so affect its rating. Ultimately,
however, in a well-populated area there is only so much that can be done to
improve the rating of a site. As Mr Roche put it:
'Obviously commercial organisations are anxious to ensure that
they are not listed 417th in Search Engine results presented to their
potential customers. If a site is not visible then it can't be found and it
won't attract visitors. There are now a range of ways whereby those
organisations can pay for greater exposure for their websites on Search
Engines.'
- One of the techniques of attracting customers for
which the site owner pays is important in this case. One of the things a
search engine can do is display advertising in the space on its pages not
occupied by the search results themselves. Alternatively it may provide pop-up
advertisements (windows which open on the user's desktop to display an
advertisement). These advertisements are generally called banners because they
are shaped to occupy the area at the top, bottom or sides of the page. An
advertiser can agree with a search engine provider for the display of a
certain number of 'page impressions' of his advertisement in respect of
prescribed keywords. The advertisements (up to the contracted maximum number)
are displayed when a user searches for the word reserved. Thus, if the word
'jobs' is reserved for 10,000 impressions, the prescribed banner will be
displayed to 10,000 users who search using the word 'jobs'.
THE BANNER ADVERTISING
- totaljobs.com use banner advertising extensively.
It started during the currency of Version 2, in November 1999. The task of
arranging all this was entrusted to Outrider Limited ('Outrider'), an on-line
media agency. The evidence from Outrider was given by Mr Hooke and Mr McGarr.
They both originally appeared in response to witness summonses, but both gave
witness statements and were extremely helpful witnesses. Eleven sites were
initially selected by Outrider for reservation of keywords and display of
banners. This list included all the major search engines except Google and
MSN. Before discussing the keywords that were reserved, I can give examples of
the banners. Some contained animated graphics generally reminiscent of the
conventional advertising campaign. The illustrated example displayed the
picture then the two other banners sequentially for as long as it was
displayed. Clicking on the banner took the user direct to totaljobs.com.
.png)
Others contained small animated drawings. Others again were described as
fake search results. They looked like this:
.png)
The fake search results show what words have been reserved ('job', 'job
agencies' and 'job vacancies' respectively). To the user, these are fairly
obviously banner advertisements, but they have the attraction that they show
the word he or she has actually typed. The strapline and the button which goes
immediately to totaljobs.com make it reasonably plain that these are not in
fact search results.
- All the banners, including all those which
contained animations of one sort and another, were supplied to me on CD-ROM.
All seemed to me to be ingenious and well designed. None made any reference to
the word REED, or to RBI. They referred only to totaljobs.com in the form of
the logo with an oval outline.
- Mr McGarr produced a list of all the keywords
which Outrider had reserved for totaljobs.com. This list was long, but as one
might expect it included the words 'jobs', 'job', 'vacancies', 'careers',
'employment', 'recruitment', 'recruitment agency', 'vacancy', 'jobsite' and so
on. This means, for example, that if a user typed the phrase 'Reed recruitment
agency', 'Reed employment', or 'Reed jobs' in the search engine window, he or
she might be presented with a totaljobs.com banner advertisement, depending on
how the search engine treated reserved words used as parts of phrases. But it
cannot be emphasised too strongly that this is not because of the use of the
word 'Reed'. It is because of the use of the reserved words alone.
- The fake search results banners look somewhat like
Yahoo! search results. Mr McGarr accepted, and indeed it is obvious, that if a
user was sufficiently careless not to read the banner, or even if he or she
did read it, he or she could or would assume that it was presented in response
to the word REED. Of course, the same would also happen with any combination
of words including the word 'jobs'. Thus, if the user typed 'monster jobs' to
use the name of another employment website and obtained a totaljobs.com
banner, the same error could also be made. The user would assume that the
banner had been displayed in response to the word 'monster'. I should say that
there was some doubt whether this could happen on Yahoo! and the other search
engines, Mr McGarr being of the view that appearance of a reserved word as
part of a phrase typed by the user would not be sufficient to trigger the
banner. Mr Rapacioli, a witness of fact for the claimants, said that it all
depended on the search engine.
- There is an email from 10 May 2001 in which Mr
McGarr discusses the statistics relating to the use of all the totaljobs.com
keyword reservations with all the principal search engines (X15). It is
interesting in its entirety since it gives some sort of overall picture of the
defendants' approach to banners. I shall set it out.
'The altavista tenancy is still performing well at a CPJs of
£0.70. I have spoken to the site and there is a possibility of becoming the
job search content provider in the careers channel. I will present the
details on Wednesday but my initial feeling (considering the budget left) is
that the button placement is performing so well in terms of click through
and conversion to job searches that it seems we already have this audience
tied up.
The keyword placements are all performing well in terms of click
through but the conversion to job searches has seen a drop. This is the
first indication we have seen that the fake search result banners are
confusing people. It is not at drastic stage but we are aware of it and will
monitor any further trends.
Yahoo keywords are still achieving the targets set. The
employment banners are falling slightly short the GPO targets which is not
really a worry. The response is still very good but the targets I set yahoo
were high so they will have to make good on any clicks that they fall short
on, which means ultimately more branding for totaljobs.
Zdnet stats are showing some very interesting results. The
response to the normal gif banners is some of the lowest we have ever seen.
This is not a determining factor for the integrated deal projections as the
placement will be different and targeted around the content much better,
however I do not think I have underestimated the click rates.
The click rate on the flash sky scraper however is over 6%! This
looks great at first but when you see the actual number of people arriving
at the totaljobs site the fall out is staggering. Only 9% of people clicking
on the banner arrive at the site. We have checked the dart trafficking
thoroughly and everything is in place correctly so there is not a problem
with the adserving as I had originally thought.
My theory is that the users are looking at the sky scraper and
thinking that they can play the game within the banner and so are clicking
to enter the game but when they realise they are being transferred to
another site they automatically press the stop button. I am talking to
incline tomorrow about the problem.'
- As the email shows, the object of the exercise is
to get 'click through'. This means that the user clicks on the totaljobs
banner and arrives at the totaljobs site. To take an example, the word 'jobs'
is reserved on Yahoo!. During the period covered by the email there were
199,903 impressions of the banner, that is, it was displayed to users on
199,903 different occasions. From those displays of the advertisements, it
seems that some 4,901 users clicked on the banner (2.45%). They seem all to
have gone through to the totaljobs website where a good proportion of them
sought job details.
- Mr Hobbs QC expended considerable effort in an
attempt to demonstrate that the use of either fake search results or
totaljobs.com banners in response to specified keywords was in some way
sinister. It plainly, in my judgment, is not (subject to what I say about
Yahoo! below), because it does not depend upon the use of the word 'Reed'. He
relies in particular on the passage in the cross-examination of Mr McGarr to
which I refer above (paragraph 56) which is to be found in its entirety at
transcript page 849. I am unable to accept that this sort of activity is in
any way legally objectionable. If a client types in Reed jobs, then he will be
served with a banner by those who have reserved the word jobs (always assuming
the search engine distinguishes the word in phrases: some do not) and this
will not be just totaljobs.com. This objection confuses a potentially
irritating form of advertising with passing off.
- I shall deal with the question whether the
claimants have any complaint in relation to the use of banner advertising when
I consider the law below.
RESERVATION OF 'REED' AT YAHOO!
- There is one exception to the general proposition
that there was no reservation of the word Reed. For a period of twelve months
totaljobs.com had the word 'reed' reserved with the Yahoo search engine. This
reservation lasted for a year, from November 1999 to November 2000. The
evidence was that this was offered by Yahoo! free of charge in addition to
three other reservations made by the defendants, for the words 'recruitment'
and 'job'. The word was associated with four of the animated banners. During
the year, the total number of page impressions for the banners was about
127,062 for 'recruitment', 64,000 for 'job' and 20,100 for 'Reed'. The click
rate following a request for 'Reed' was thus about 5.2%. The corresponding
rates on 'recruitment' and 'jobs' were about 4.5% and 4% respectively. The
evidence was that these are good click rates. Unfortunately, there was no
evidence to show what rate of job searches on the totaljobs.com website they
gave rise to. From November 1999 to the middle of November 2000, the total
number of page impressions at the totaljobs.com website was 37,822,714
according to my addition of Mr Collins' weekly figures. This is a page
impression count, and therefore much larger than the number of persons
entering the site with a view to looking for jobs. But even if the number of
pages viewed is 20 on average for every person visiting the site, the number
of click throughs to the site, at 20,100 from the reserved word Reed on
Yahoo!, is of the order of 1% of the visitors to the site. It is not known how
many of the persons clicking through the banner displayed on Reed by Yahoo!
actually used the totaljobs.com site, but a conservative estimate must
nonetheless place it as less than 1% of the visitors to the site. It is some
11% of the visitors to the site arriving via Yahoo!. This is properly to be
regarded as passing off by substitution, but the scale is very small.
ALLADVANTAGE.COM
- From 11 September 2000 to 11 October 2000, a
period of one month, the defendants had an arrangement with a website called
alladvantage.com. Alladvantage.com provided a facility which enabled their
subscribers to surf the Web from within, as it were, the alladvantage.com
site. Any website viewed by the subscriber would be surrounded by an
alladvantage.com frame, and the frame would carry banner advertisements. The
advertisements were not served by reference to any word, but by reference to
the URL of the site being viewed. The arrangement was that if a viewer
accessed the claimants' website reed.co.uk, (not if they searched for it) a
banner advertisement for totaljobs.com would be displayed in the
alladvantage.com frame. What the effect of this might be, what it looked like,
and whether it amounted to anything significant, is quite unclear. I have
studiously avoided analogy in this case, but it has some resemblance to
putting a Ford advertisement next door to a Vauxhall showroom. Moreover, it is
not pleaded.
THE CHANGE FROM VERSION 2 TO VERSION 3
- Version 3 of the website was launched on 10
January 2000. Consumer advertising of the site began about a week later. The
website contained RBI branding more prominent than that appearing on version
2. At the bottom of the home page the RBI logo (above) and a copyright '© 2000
Reed Business Information' appear next to links to Yahoo! and certain internal
pages including the Terms and Conditions and Information for Advertisers. Mr
Kelsey attached much importance to the suggestion that this material was
'below the fold' in the page, by which he meant that it did not appear when
the site was first accessed. This may well be true (although I have some
doubts if a high resolution screen is used) but in any event its purpose is
clear. As Mr Kelsey said, the RBI brand had a considerable reputation with
clients, from which benefit could be derived and which could be reinforced by
mention of the brand on the website. It seems that a usability test was done
on a preproduction version of this website about Christmas 1999, according
both to Mr Ivory and Mr Perkins, but they said that it did not draw attention
to the use of the RBI logo.
- It is quite clear that Mr Kelsey's view was not
shared by all at RBI. Mr Perkins considered that the website carried too much
RBI branding in Autumn 1999 when he joined. Version 3 in fact contains more
mention of RBI than version 2 and includes the logo. His view was that it
should be dissociated from the RBI brand, a view which, he said, was initially
unpopular at RBI. He thought the only mention of RBI on the website should be
those which were legally required (which would probably include the Terms and
Conditions, and which everybody seems to have considered included the
copyright line) an that it should be as small as possible. Mr Collins seems to
have been of much the same view. Mr Kelsey plainly disagreed and his view
prevailed with those members of the Board with whom the decision rested.
- I think it is fair to say that Mr Perkins was not
so much worried about the possibilities of confusion with the claimants as
about the need to have a clean totaljobs brand. The contrary view was based,
as I understand the totality of the evidence, on the need to trade off the
substantial reputation which RBI enjoyed with their clients. In taking the
second view, I think that it is established that everyone concerned in the
decision to use version 3 was conscious of a risk of confusion, but did not
see it as significant. Mr Kelsey made this quite clear.
- Other material, including press releases, put out
by RBI at this time expressly established the connection between RBI and
totaljobs. A standard note to editors relied on by the claimants said this:
'totaljobs.com (www.totaljobs.com) is a new online
recruitment service provided by Reed Business Information (RBI), a member of
the Reed Elsevier plc group of companies.'
- On the 7th and 8th June 2000 Serco did another
usability study of the website. The report of this work, dated 22nd June 2000,
makes it clear that there was still a risk of deception. The report is
prefaced by an executive summary, which makes no reference to any risk of
confusion with Reed Employment, but paragraph 4.1.2, headed 'Branding', says
this:
'Only one participant commented spontaneously on the Reed
Business Information logo and origin of Totaljobs. When participants were
asked who was responsible for the site, most had "no idea" at first, but
scrolled quickly to the bottom of the page to find out.
While participants often did not know who had [developed
together][1] this did not appear to have a negative effect on their trust
or perceptions of the site. Few users questioned who was behind the site,
and some said that they trusted the brand instinctively because they had
seen it advertised.
Having seen the Reed logo, some participants believed that Reed
Employment was responsible for Totaljobs. This gave one participant the
impression that the site would be biased towards secretarial
work.
Recommendation
• Consider reducing the emphasis of the Reed Business
Information logo, or perhaps remove it altogether. This will reduce the
likelihood of users reaching the conclusion that Reed Employment is
responsible for Totaljobs. Maintaining the copyright information in its
current position would provide some indication of the origin of the site to
users who are concerned about it.'
- Mr Collins wrote an email almost immediately which
was sent to Mr Sissons, Mr Convey, Mr Stephens, Ms Parsons, Mr Haigh, Mr
Ivory, Mr Knowlson and Mr Cassidy. He said this, under a subject line reading
'RBI/Reed Elsevier references in connection with totaljobs.com':
Dear all,
Our public image has received something of a battering from the
confusion surrounding the ownership of tj [totaljobs]. Our attempts to
capitalise on our brand heritage have backfired on two fronts:
1) There is confusion between us and the "free jobs high street"
Reed Employment.
2) There is a mistaken image of us which keeps re-surfacing of
tj simply being the online front brand of our paper titles.
Obviously we do not want to encourage these damaging confusions
and as such Rob has taken the decision to withold [sic] any mention of
RBI/Reed/Reed Elsevier in all our communications from the tj team - this
includes brochures, sales letters, verbal pitches, press releases and all
other forms of communication from any department (other than communications
to the financial markets on corporate performance etc).
The site will no longer have any corporate ownership branding
on.
Obviously we will still promote our partners - whoever they
might be at any time - so the vertical paper brands can be promoted
alongside external partners on and off-line.
Hope this is all clear. If you have any question on this then
give me or Rob a call. I would appreciate you communicating Rob's decision
to your teams.
The second problem identified in this email obviously has nothing to do
with passing-off. Mr Convey informed Mr Collins that the contents of the
latter's fax relating to vertical markets would be discussed at a forthcoming
meeting which would take place on 7 July. Nobody who was present at the
meeting was cross-examined although Mr Convey gave evidence to the effect that
the meeting was concerned with affiliations with magazine titles. The
explanation is as follows:
'By "affiliation" I was referring to the fact that
totaljobs had created affiliations with titles that were not
necessarily owned by RBI. A good example is a magazine in the accountancy
sector called "Accountancy" published by the Institute of Chartered
Accountants. This affiliation meant that totaljobs would place
advertisements in the title, and effectively provided the recruitment zone
of Accountancy's own website, and in return, the magazine's brand was
included on the totaljobs website.'
There is an agenda for this meeting in existence. The same two reasons are
given for removing the RBI name: the suggestion that the site contains only
the jobs listed in the magazines, and 'people think we are a recruitment
consultancy'.
- Mr Soppelsa, who was on the technical side and is
no longer employed by the defendants wrote another email in response to Mr
Collins's:
'I have arranged for the RBI logo to be removed from all pages
next time the site is deployed (Sun 27/6). We have left the copyright
notice ...
© 2000 Reed Business Information Ltd.
Unchanged because I am not sure what legal entity it should be
replaced with (totaljobs.com?). Can you advise.'
- The defendants were also aware that the claimants
were about to start a campaign for their website, reed.co.uk. An email from
Sarah Parsons indicates a concern with totaljobs.com:
'It has come to my attention that Reed Executive plc owners of
reed.co.uk and the Reed Personnel Services brands Reed Employment, Reed
Accountancy etc., are due to start their nationwide advertising campaign for
their online brand from Monday. This will undoubtedly cause more confusion
in the market place about totaljobs.com ...'
- The immediate result of Mr Collin's email was a
discussion among those responsible and the removal of the RBI logo from the
site. It is clear that the defendants considered that the only material risk
of confusion existed among candidates. They particularly wanted the website to
be associated with RBI because their understanding was that they were
obtaining their advertisers from among those who advertised in the paper
publications, who were well aware of who RBI were and would not be misled into
supposing that they were placing their advertisements with the claimants, Mr
Collins made this clear:
'Q. Does this mean that you have taken a decision in what you do
not regard as consumer advertising that you would not sanitize in the way
that I have indicated? A. Where we do not believe there is risk of
confusion, because the Reed brand has heritage, i.e., recruiters, we feel it
is appropriate to use it.
Q. How can you be sure that material you issue to recruiters is
not going to be misinterpreted or propagate misconceptions beyond them? How
can you be sure? A. You are asking an impossible question, because to be
sure you have to actually ask every single person whether they know. It is
an impossible task.'
- The logo was removed from the website on 26 June
2000. The copyright line remained. The metatags (which included 'reed business
information') also remained, and the reservation at Yahoo! of the single word
'Reed' continued. Mr Hobbs QC submits that nothing was done to implement the
policy set out in the email in the context of search engine optimisation or
keyword purchases. This gives a misleading impression. There was only one
objectionable keyword purchase (in fact a free gift) of 'reed' alone at
Yahoo!. According to the Outrider witnesses, search engine optimisation as
such was not carried on until Outrider did it, starting in January 2001, when
'reed business information' was removed from the tags on the optimised pages.
In general, business-to-business communication continued to identify
totaljobs.com with Reed Business Information. The claimants rely for example
on a press release of 24 September 2001, as 'continuing to promote the
RBI/Reed/Reed Elsevier connection'. The actual substance of the release does
not, in fact, refer to anybody other than totaljobs.com. The notes to the
editor are as follows:
'About totaljobs.com
totaljobs.com is the leading UK online recruitment service
offering recruitment solutions across all sectors. With an average of 50,000
positions advertised at any one time, it offers more UK vacancies across
more industry sectors than both of its competitors Monster and Stepstone put
together. In addition, totaljobs.com also carries the recruitment
advertising of over 2000 corporates, SMBs and recruitment agencies across
the UK.
Totaljobs.com Limited is a wholly owned subsidiary of Reed
Business Information. The successful development of totaljobs.com is part of
Reed Elsevier's commitment to invest UK.£750m in online initiatives. Reed
Elsevier's two parent companies, Reed International PLC and Elsevier NV are
listed on the Amsterdam and London Stock Exchanges. Trading on the New York
Stock Exchange is in the form of American Depository Shares.
For more information see
www.totaljobs.com
www.reedbusiness.com
www.reedelsevier.com'
- In this passage the defendants do not use the word
'Reed' alone. The claimants' contention is overstated. It is difficult to see
how a reasonable objection could be advanced against this use. The passage
quoted refers to the last significant event to which I have to refer, which is
the incorporation of totaljobs.com Limited and the transfer of the business to
the new company. This took place in August 2001, and the surviving visible use
of 'Reed' in the copyright line on the front page of the site stopped.
- After the removal of the RBI logo the website
continued to be updated, passing through various versions which it is not
necessary to refer to until Outrider began to optimise the site, and reviewed
and rewrote the metatags, dividing them up among the various pages for the
site according to the content of the pages. By this stage the whole process
had become more sophisticated. There are index pages, which are visible to the
user. There are information pages, which are visible to the search engines,
but not to the user, and are designed to cause the site to rank high with the
search engines. The information pages are designed to be picked up by the
search engines. Then there are search pages, which are visible to the user.
The search engines pick up the information pages, and if a user clicks on one
of these pages in the search engine, he is sent to the corresponding search
page in the site. Three whole collections of the new style metatags are
exhibited (including one for jobs in acupuncture) for the information and
search pages. None contain the word 'Reed' either on its own or as part of a
phrase. Every
.png)
tag contains
'from totaljobs' as do the 'description' metatags. There was some evidence
from Mr Roche, the claimants' expert, that there were no metatags in use on
the site at the time of the trial, since they had been all removed in November
2001. Mr Hooke of Outrider, who was responsible for the optimisation of the
site, had begun to introduce the new information pages in January 2001.
totaljobs remained responsible for the index and search pages. Mr Hooke was
dismissive of the long lists of metatags which I have quoted above (paragraph
48 above).
- At this point I should briefly refer to the word
'optimisation'. The optimisation of a website has a number of aspects. It
includes designing metatags on the site in visible and invisible pages,
creating links from other sites, submitting pages to the search engines and
the directories (see below paragraph 90) and arranging page content in a
suitable way. Thus when there is reference to search engine optimisation, it
must be borne in mind that it has all these aspects. So far as the present
case is concerned, these activities are relevant in so far as they involve the
use of the word 'Reed', and that area is limited.
- Mr Ivory's evidence was that the site was cleaned
of visible references to RBI and Reed Elsevier in August 2001, and not before.
On 24 September 2001, the defendants' solicitors wrote informing the claimants
that 'our client has ceased using the copyright [line] or any reference to the
sign Reed, in relation to the Total Jobs site. The Total Jobs website has now
been transferred to a new company, Total Jobs Limited, and the business
therefore, is not being conducted with any reference to the Reed sign or
mark.'
- The final major alteration to the website took
place in November 2001. It was made with the collaboration of Outrider.
- This leads to an allegation of bad faith,
unpleaded, which the claimants advanced by reference to the evidence of Mr
Roche. The suggestion was, in short, that steps had been taken, at some
indeterminate time before the metatags containing the word 'Reed' were removed
from the site, to prevent search engines (or at least certain search engines)
from further indexing the site. This was by leaving a file called
robots.txt on the site. The suggestion was that any subsequent
alteration or removal of the metatags would be ignored by the search engine
spiders, so the old indexes would survive. Mr Hooke had written a
robots.txt file which he thought had been put on the site in November
2001. It was removed in January 2002. This was combined with an allegation of
'cloaking' which is essentially the submission of information pages, in this
case including the word 'Reed' to the search engines. The pages are then
replaced with others, not containing the word 'Reed' and a robots.txt
file placed on the site to prevent further indexing by the spiders. In this
way the site could be indexed with the search engines on the basis of pages
which had only a transient existence. If this had happened, it might well have
been dishonest, and it would have been good evidence of an intention of the
defendants to pass off by use of the word 'Reed'. The allegation of cloaking
was withdrawn, but the whole suggestion that robots.txt was in some
sense being used to protect old search engine indexes for the site, came
apart. A remarkable facility available at a particular website,
web.archive.org, which is a vast electronic library of sites on the internet
shows that on 21 November 2001 the contents of the robots.txt file was
changed from a line which seemed to disallow access to only one file, which
the experts agreed would be ineffective for its chosen purpose and would not
prevent spiders accessing the site, to a line which would bar all access by
spiders to the site. There are a number of plausible reasons for this, chief
among which is that the new site contents were developed on a test site which
was deliberately closed to spiders, and when the files were copied to the
working site the robots.txt files were carried with them.
- I should also mention the other sites complained
of. These are coolwebjobs.com, coolwebjobs.co.uk, reedbusiness.com and
lawmoves.co.uk. The complaint in respect of reedbusiness.com is misplaced.
There is no suggestion that in the context of this website, which is the
principal website for RBI, the links to totaljobs.com and coolwebjobs.co.uk
make any misrepresentations. The loading of totaljobs.com within the
reedbusiness.com frame as an additional ground of complaint is fanciful. The
objection to coolwebjobs.com [or .co.uk] is much the same as that in relation
to totaljobs.com, but the site has not existed since November 2000.
Lawmoves.co.uk no longer exists, but during its life it bore the Reed Elsevier
logo. The evidence is slight (and I note that coolwebjobs.co.uk contained a
link to the claimants' site at reed.co.uk) but in relation to the words 'reed
business information' so far as readable or in metatags and not commented out
I will deal with these sites in the same way as totaljobs, for what it is
worth.
THE POSITION ON THE SEARCH ENGINES BY TRIAL
- Mr Roche, the claimants' expert, carried out
extensive work when he prepared his statement. Annex 5 to that statement
contains the essential materials. Pages 1-5 are the 'code' for a page called
www.totaljobs.com/general/contact_us.html. This copy was obtained on 20
December 2001, and it contains a reference to Reed International and Reed
Elsevier, under the heading 'about us'. This reference is within a so-called
comment. The evidence was that when programmers alter code, they do not
necessarily delete it but 'comment it out'. This means that the code is
ignored by the program for which it is designed (here, the browser owned by
whomever is consulting the site). So in December 2001 the site still said
'totaljobs.com Limited is wholly owned by Reed Elsevier plc,
which is jointly owned by Reed International P.L.C. and Elsevier NV. Reed
International and Elsevier have separate stock exchange listings in
Amsterdam, London and New York. Reed International P.L.C. is a FTSE 100
company.'
- The experts are agreed (I quote their points of
agreement) that the word Reed appears with Elsevier in a comment tag, and
while it is theoretically possible it is highly unlikely for that text to be
indexed by a search engine, and thus to come up on a search for Reed as a
result of this comment. Mr Ivory's engine is that this wording was introduced
on 22 August 2001 and commented out in November 2001, with the introduction of
version 7 of the site. Until this was done it remained visible on the site.
This is an example of the rather lackadaisical approach of the defendants to
sorting the position out even in the aftermath of their open offer. I do not
need to consider it further.
- Certain press releases are also included in the
site, in the form of documents which may be downloaded. These press releases
contain the kind of 'Notes to editors' or 'about totaljobs.com' which I have
referred to above. Mr Roche produces an example in Annex 5 at pages 6 and 7.
The experts are agreed that most search engines do not index 'non-web page
content', which is what these documents are. But they observe it is becoming
an issue with some search engines, such as Google. For present purposes, it is
therefore irrelevant.
- Pages 8 and 9 show a print-off from the site
showing a reference in the section devoted to employment agencies to the Reed
Technology Group, one of the claimants' divisions. I infer that this reference
(albeit to the claimants) could mean that a search engine would present this
page (with a pretty low ranking) as a result of this use of the word Reed as a
search term.
- Pages 11 to 48 of Annex 5 show the results of
doing a search on 22 search engines, using the phrases 'jobs online', 'Reed
jobs', 'recruitment sites', 'jot sites' and 'totaljobs'. The search was
restricted to the first three pages of results (that is, thirty results) and
rather unfortunately they do not in all cases show where the claimants' site,
reed.co.uk, came up in the same searches. On only one site (MSN UK) did the
search on the generic phrases produce a result for the defendants. This was in
part a consequence of an agreement between MSN and the defendants. It is to be
noted that the results on MSN on 'Reed jobs' were substantially below those
obtained for any other search phrase, and I disregard this as irrelevant. I
have tabulated the other results for convenience. In my table I set out the
name of the search engine and the phrase. If there is no response, I put in X.
If there is a response, I note page and position thus: page number/position in
list starting from page 1. I have ignored all the results for individual pages
within totaljobs.com, again because they seem to me to be irrelevant.
| Search Engine |
'Reed jobs' finds
claimants |
'Reed jobs' finds
defendants |
'totaljobs' finds
defendants |
| Altavista |
Don't know |
X |
1/1 |
| AOL:search |
1/2 |
1/3 |
1/1 |
| Excite:web |
1/1 |
1/3 |
1/1 |
| Google |
Don't know |
X |
X |
| HotBot |
1/1 |
1/3 |
1/1 |
| Looksmart |
1/1 |
1/22 |
1/1 |
| Lycos |
Don't know |
X |
1/1 |
| MSN:search |
1/2, 1/4, 1/7 |
1/8, 2/18 |
1/1, 1/3 |
| Overture |
1/1 |
1/3 |
1/1 |
| Yahoo |
Don't know |
X |
1/1 |
| Altavista UK – English-UK |
Don't know |
X |
1/1 |
AOL United
Kingdom (United
Kingdom
Sites) |
Don't know |
X |
X |
| AOL UK (Whole web) |
1/1, 1/2 |
1/5 |
1/1 |
| Excite UK |
Don't know |
X |
X |
| Google UK |
Don't know |
X |
1/1 |
| Altavista |
Don't know |
X |
1/1 |
| AOL:search |
1/2 |
1/3 |
1/1 |
| Hotbot UK (World- Wide) |
1/1 |
1/3 |
1/1 |
| Looksmart UK |
Don't know |
X |
1/1 |
| Lycos UK |
Don't know |
X |
1/1 |
| Overture UK |
Don't know |
X |
3/84 |
Yahoo UK
worldwide |
Don't know |
X |
1/1 |
Yahoo United
Kingdom-UK only |
Don't know |
X |
1/1 |
- Where a search against 'Reed jobs' did elicit
totaljobs.com Mr Roche produces the search results, which has enabled me to
put the result for the claimants in the first column. AOL produces the
claimants in second place, behind somebody called www.uk20.co.uk. Excite has
the claimants as the first, as do HotBot, and Looksmart. MSN have three
references to the claimants before one gets the defendants (and a result for
www.uk20.co.uk again). Overture has the claimants first, and www.uk20.co.uk
second before the defendants. AOL UK have two entries for the claimants and
one again for www.uk20.co.uk before the defendants. HotBot UK has the
claimants first, www.uk20.co.uk second and the defendants third.
- Finally there is the evidence of a single search
against the word 'Reed' alone, performed on HotBot UK on 21 December 2001.
This was a search for pages within totaljobs.com, not a search across the
internet, and elicited twelve individual pages from totaljobs.com. Not all of
these pages formed part of the site the visitor would have seen, but some at
least were available to be spidered in November 2001. The significance of this
is not entirely clear, since the pages bear several different dates. but the
experts agree that the results from these pages show that the site has been
indexed since November and thus included the word 'Reed' at that time and the
experts agree it was most likely to have been in the metadata on those pages.
However, I understood from Mr Roche that there was no way of telling, without
examining the files on the site, whether these were just old pages no longer
in use or whether they formed part of the working site.
- Inertia of the search engine was undoubtedly part
of the cause of the continued production of totaljobs.com in response to 'Reed
jobs'. Mr Roche observes that when he did his searches some of the pages
indexed on the search engines no longer appeared on the server. These are
so-called 'legacy' pages, and while the search engines maintain these records,
they will continue to point to pages which no longer exist.
- It must also be observed, however, that in the
cases in which 'Reed jobs' found the defendants, it also found the claimants,
and the search engines in question listed the claimants at least once before
the defendants.
- By the trial a search on 'Reed jobs' was unlikely
to elicit totaljobs.com at all, and if it did all the evidence showed that it
would be ranked well below the claimants' own site, reed.co.uk. I will draw
the inference that the word 'Reed' was not finally eliminated from the working
parts of the site until late, probably in November 2001, and odd pages may
have continued to contain it in a form in which it might be spidered,
depending, according to Mr Roche, on the enthusiasm of the spider and the
depth of the page in the site.
WEB DIRECTORIES
- Although closely associated with the general
issues raised by search engines, I should deal with web directories as a
separate issue. Directories are lists of websites, arranged thematically,
which are not constantly changed by the activities of spiders. Directory
entries are made at the request of websites and are intrinsically more
permanent than the databases maintained by spiders. Some search engines
maintain directories and there is an 'open directory project' called Dmoz.
This director raises a particular problem because Mr Hooke's evidence was that
an attempt to change the entry failed. The entry is as follows:
'A searchable database of over 12,500 live job opportunities,
including IT permanent, IT contract and cool web jobs, from Reed Business
Information'
- The evidence was that it has not proved possible
to change this entry, and it still remains. This entry on its own may result
in totaljobs appearing in the table which I have set out above.
ADVERTISING OF TOTALJOBS.COM OTHER THAN ON THE WWW
- Rather strangely, Mr Howe QC was resistant to my
suggestion that the defendants should disclose the advertising for
totaljobs.com which had been used in media other than the internet to
advertise the website. In the end, convenient bundles containing for the most
part conventional print media and poster advertisements directed to clients
and candidates was produced. All this advertising, which includes a series of
striking advertisements used on the London Underground, among which an
advertisement depicting a cellist who wished to become a sheep shearer was
memorable for me at least, makes no reference to the word REED at all. A
connection between totaljobs.com and the defendants is made in the defendants'
own recruitment advertising, but that is not, as I understand the case,
complained of. For example, in 2000, Reed Business Information issued a
brochure entitled 'Key Recruitment Brands'. This brochure lists and describes
the various titles and their associated websites (if any). The brochure is
aimed at clients, and contains a list of all Reed Business Information
products, showing publication frequency, together with directories, CD-ROM
publications and websites. Similarly, advertising by Reed Business Information
for employees to work with totaljobs.com is explicit:
'Tell your boss you've left them for a website.
New Media Account Managers and Sales Executives - South
London/Surrey
Chances are you've see the ads launching totaljobs.com - which
we at Reed Business Information are confident will become the leading United
Kingdom-based web recruitment service.
Now we're giving you the unique opportunity to sell
it.
Make no mistake, this is no cowboy job-site hastily constructed
in an attempt to jump on the new media bandwagon. It's a high profile, high
quality product backed by a the vast resources of Britain's number one
business information provider - a FTSE 100 company that's the name behind
New Scientist and Computer Weekly ...'
- Nonetheless, there is no suggestion whatever in
the consumer advertising that the defendants wish in anyway to trade off the
name Reed. It is at least consistent with the evidence that certain of the
witnesses (particularly Mr Kelsey) gave me, that they considered the RBI brand
to be a valuable one with their existing clients, but did not wish to cause
confusion with the claimants.
EVIDENCE OF ACTUAL CONFUSION
- The claimants rely upon the evidence of a number
of witnesses some cross-examined and others not. They also rely upon certain
publications. The witnesses were as follows:
Sean Whetstone This witness gave evidence in relation to
the 1999 Harrogate show, and his evidence is discussed in that
context.
Haider Kadhim Mr Kadhim gave evidence that one of the
defendants' employees had mistaken the claimants' stand for that of the
defendants at the 2001 Harrogate show. He raises a matter which was not
relied on at trial (the use of the slogan 'first choice for HR' by the
defendants) and also gave evidence that a visitor had approached the
claimants' stand and asked if they were part of Reed Publishing. This is not
evidence of deception or of passing off, although it confirms the confusing
similarity of the parties' names.
Walter Rothon Another of the claimants' employees, he
gave evidence that recruitment agencies had telephoned him asking whether
Reed Computing, the branch of the claimants' group for whom he worked,
required any contractors. He also gives two other examples of callers who
wanted to sell computer hardware or software. He thought, reasonably, that
the callers thought that 'Reed Computing' was the defendants' IT department.
The same comment can be made as for Mr Kadhim above.
Alexander Silk dealt on 31 January 2000 with a single
caller who wished to market totaljobs.com. He passed that person on to Mr
Rapacioli (who gave evidence for the claimants).
Peter Kane is Head of Client Services at Reed Online,
part of Reed Executive plc and responsible for the claimants' website
reed.co.uk. He sent an email on 16 August 2001 to Pathway IT Resourcing,
itself a recruitment company, promoting the 'freecruitment' service on
reed.co.uk. The responsible person at Pathway IT Resourcing replied that he
already used Reed Online's services in the form of Computer Weekly and
totaljobs.com. If this is evidence of passing off, it is evidence of passing
off by the claimants of the services which they provide under the name
'freecruitment' for those provided by Computer Weekly. The cross-examination
reveals the cursory consideration which would have been given to Mr Kane's
email, and the better view is that this is a yet further demonstration of
the confusing similarity of the names of the parties.
Sasha Bishop gave evidence of enquiries relating to
totaljobs.com received by the claimants. These would necessarily be
enquiries from clients. The evidence does not establish passing off. It did
also establish that the 'online team' had been told in November 1999 to keep
an eye open for instances of confusion, and that Ms Bishop had continued to
do that until she left the group in September 2000.
I infer from Ms Bishop's answers that I have probably been shown all the
instances of confusion recorded by the claimants since November 1999. If this
is so, then the numbers are small.
- The Monster guide to Jobhunting is a
publication sponsored by yet another job advertising service, monster.co.uk.
Published by Prentice Hall, the 2001 edition is edited by Andrew Chapman. On
page 60, the following passage appears:
'Some of the biggest jobsites have indeed got professional
recruiters behind them, although it's not always immediately obvious.
Monster, for example, is part of TMP Worldwide, which is one of the world's
largest recruitment agencies, while Totaljobs is part of the Reed group. Yet
Reed also has a large, more direct presence on the net as www.reed.co.uk.
Why would it differentiate like this? Part of the answer is to divide and
conquer ...'
- The London Professional Recruitment guide is a
guide for recruiters, rather than candidates, and is published by Telegraph
Businessfile (a pull-out recruitment supplement published by the Daily
Telegraph) and 500 Publishing. It is said to be a guide to London's
recruitment market, and to provide analysis of the leading consultancies. Page
230 of this guide contains a discussion of 'consultancy backed websites' and
manages to get the whole position entirely wrong:
'reed.co.uk could be viewed either as consultancy or
publisher-backed as the parent group is active in both sectors. Although
reed.co.uk appears a relative newcomer to the market, with market visibility
only really increasing in late 2000, the user-friendly site was the first
offered by a general recruitment consultancy when it first went online in
1995. The Reed Online brand is backed by a strong branch network and also
includes totaljobs.com within the stable. Reed.co.uk provides free online
advertising for clients and free training advice through reedon.net. Student
site Redmole.co.uk provides advice on debt management, job opportunities and
a lighter, tongue-in-cheek community area named Mole's Hole. Personnel
Today is linked with totaljobs.com, ensuring that it has all bases
covered if users disregard offline publications. Reed.co.uk features 34
industry sectors including legal, IT and media.'
It will be apparent that this was written by someone who thought that the
claimants were associated with the defendants, and had correctly connected
totaljobs.com with RBI. This is a good example of the confusion that can
result from the word Reed. But I think that Mr Perkins was right under
cross-examination when he says that this kind of confusion would be
independent of the existence of totaljobs.com. However, I think that there is
justification also for the view that once the businesses become close it is
important to reduce the scope for confusion.
- Finally Mr Barrie Clement, a journalist with the
Independent, wrote an article based on a press release from
totaljobs.com in January 2000. It was entitled 'one in ten new staff leave
after 24 hours' and described totaljobs.com as being 'an internet subsidiary
of the Reed Group'. This statement is ambiguous. It again demonstrates the
problem caused by the word 'Reed'.
INFRINGEMENT - THE LAW
- Section 10 of the Trade Marks Act provides as
follows:-
10.-(1) A person infringes a registered trade mark if he
uses in the course of a trade sign which is identical with the trade mark in
relation to goods or services which are identical for those for which it is
registered.
(2) A person infringes a registered trade mark if he uses in the
course of trade a sign where because –
(a) the sign is identical with the trade mark and is used in
relation to goods or services similar to those for which the trade mark is
registered or
(b) the sign is similar to the trade mark and is used in
relation to goods or services identical with or similar to those for which
the trade mark is registered,
there exists a likelihood of confusion on the part of the public
which includes the likelihood of association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the
course of trade a sign which –
(a) is identical with or similar to the trade mark,
and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is
registered,
where the trade mark has a reputation in the United Kingdom and
the use of the sign, without due cause, takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the trade
mark.
The claimants say this is an 'identical sign, identical services' case
within sub-section 10(1). The defendants say that on the contrary the service
provided by totaljobs.com is not included within 'Employment Agency Services,
included in Class 35', and that this is accordingly an identical sign, similar
goods case. The final factual investigation is therefore to ascertain the
nature of the services provided by totaljobs.com.
- At first instance, at least, the proper approach
to the question under sub-section 10(1) and to any case under subsection 10(2)
in which the identity of the marks in question is alleged is to consider
whether the defendants' sign differs from the claimants' mark only by
additional matter which does not change the identity of the sign to the mark.
There are a number of cases at first instance and the conventional approach is
summarised by Jacob J in Asprey & Garrard Limited v WRA (Guns) Ltd
[2001] IP&T 1273 at page 1279, to which I should add the decision of
Neuberger J in Premier Brands UK Limited v Typhoon Europe Limited
[2000] FSR 767 at 778. I have already expressed my views on the meaning of
this provision in two cases, DaimlerChrysler AG v Alavi (t/a 'MERC')
[2001] RPC 42 and Decon Laboratories v Fred Baker Scientific [2001] RPC 17. The point has however been the subject of a concession by counsel in the
Court of Appeal in the Asprey case to the effect that the law is not so
clear as to entitle a claimant to summary judgment, in the light of a
reference to the Court of Justice in Case C-291/00 SA Société LTG Diffusion
v SA SADAS, a reference from the Tribunal de Grande Instance, Paris.
- This last case concerns the infringement of the
mark 'Arthur' (in manuscript) by 'Arthur et Félicie'. Advocate General Jacobs
has expressed the opinion that
'46...the court should follow with regard to identity the path
traced with regard to similarity in particular by its case-law in
SABEL and Lloyd, concentrating on the need for a global
assessment of the visual, aural (even, in view of possible new types of
trade mark such as scent marks, sensory or organoleptic in the broad sense)
or conceptual features of marks or signs in question and the overall
impression created by them in particular by their distinctive or dominant
components, in the perception of the average consumer, such a consumer being
assumed to be reasonably well-informed, observant and circumspect, although
often having to rely on an imperfect picture of a mark which he has kept in
his mind. That does not mean that the concept of identity must be watered
down that that it must be assessed on that basis.
47. Thus a mark and a sign, or two marks, will always be
identical where in the light of such an assessment any differences are
minute and wholly insignificant, so that the average consumer would not find
any noticeable difference between the two; otherwise, they can be regarded
as no more than similar.'
Unfortunately, I think the Advocate General declined to deal with one
classic example of the problem, which points up the difficulty of any analysis
which involves taking into account the dominant components of the alleged
infringing sign. This is the sign consisting of 'Imitation X', where X is a
registered trade mark. This has always been an infringement in English law, as
may be seen from the discussion in Saville v June Perfect (1941) 58 RPC
147. The Advocate General said this:
'48. It is not necessary or appropriate in the context of the
present case to express a definitive view on the treatment in that regard of
a sign such as "Imitation X" in which the element "X" taken alone may be
identical to an earlier mark but "Imitation X" is not. In such case, as I
have said, it might be difficult to establish a likelihood of confusion on
the part of the public, given the bold denial of identity with "X". Article
5(1)(b) of the Directive might thus not apply and, if those cases were also
beyond the reach of Article 5(1)(a), it would seem difficult to prevent what
seems a blatant abuse. However, it may well be that the average consumer
would perceive a designation such as "Imitation X" not as a self-contained
sign but as the mark "X" accompanied by an extraneous element.'
- It is worth emphasising that the first task is
always to identify the defendant's sign. It seems clear from paragraph 50 of
his opinion that Jacobs AG might well have considered a change of type to one
noticeably different from that registered would be sufficient to render the
mark and the sign merely similar, as would the addition of another name,
although those issues were left to the referring court.
- I am rather of the view that the view that I
have expressed in Decon v Fred Baker and in DaimlerChrysler v
Alavi (above) may well turn out to be insufficiently nuanced when the ECJ
gives its ruling in the Arthur case. I shall accordingly deal with both
possibilities.
SUBSECTION 10(2): THE TESTS
- If this is a subsection 10(2) case the nature of
the comparison, and the factors to be taken into account, have been considered
by the ECJ in a number of cases. The cases on the corresponding provisions of
the Directive, that is, Art 5(1) and 5(2) are: Case C-251/95 Sabel v
Puma [1997] ECR I-6191, Case C-39/1997 Canon v MGM [1998] ECR I-5507, [1999] RPC 117 Cas C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH
v. Klijsen Handel BV [1999] ECR I-3819, [1999] ETMR 690 and Case C-425/98
Marca Mode CV v Adidas AG [2000] 2 CMLR 1061. From these cases I derive
the following propositions:
1) Under Art 5(1)(b) the comparison is not a straightforward
mark for sign comparison. On the contrary, it involves a global assessment
of the likelihood of confusion as to origin of the goods or services
concerned. This involves an assessment of the distinctiveness of the mark,
and involves the assessment of many factors familiar in passing-off cases
(Sabel, Lloyd).
2) The person to be considered in considering the likelihood of
confusion is the ordinary consumer, neither too careful nor too careless,
but reasonably circumspect, well-informed and observant. There must be
allowance for defective recollection, which will of course vary with the
goods in question (a fifty pence purchase in the station kiosk will involve
different considerations from a once-in-a-lifetime expenditure of
£50,000).
3) The mark is to be considered as a whole. All relevant
similarities (visual, aural, conceptual) must be assessed having regard to
the fact that some aspects of the mark and sign will be more distinctive and
dominant than others.
4) The phrase 'likelihood of association' is an explanation of
the kind of confusion as to origin with which the provision is concerned. It
is not a different type of infringement from confusion as to origin.
(Sabel, Canon, Marca Mode).
5) There is a greater likelihood of confusion with very
distinctive marks (Sabel, Canon, Lloyd). This is a very surprising
proposition (and perhaps only a presumption of fact, since this cannot be a
legal issue), since normally it is easier to distinguish a well-known word
mark from others close to it. But it seems to me to make more sense when one
comes to consider device marks. I have difficulty understanding how it can
affect the similarity of goods, but that is the law.
6) A mere association between the mark and the sign created in
the mind of the public will not amount to an infringement unless it also
entails deception as to the economic source of the goods bearing the sign
(Marca Mode, Canon).
INFRINGEMENT - NATURE OF THE SERVICES PROVIDED BY
TOTALJOBS.COM
- Mr Ivory and Ms Sklar described the entirety of
the services offered by totaljobs.com. As Mr Ivory says, it is divided into
two areas, for jobseekers and recruiters respectively. For the jobseekers,
there is a database of jobs divided into thirty industry sectors; a search
facility called Find a job; a facility for registering a CV for searching by
recruiters or onward transmission to them; material to assist the jobseeker in
preparing for interviews; an advice section for general career advice; a
skills and training section which keeps them informed on skills in demand and
where to go for training; and a News and Events section.
- For the recruiters, there is the job posting
area; CV database available to be searched; a facility to have a corporate
profile made available on the site and response management and advertisement
management tools. There is also candidate verification offered by Experian, an
employee checking agency.
- The response management tools enable jobseekers
to respond to totaljobs with their CV rather than to the advertiser. A
software tool called Response Manager enables recruiters to organise their own
recruitment via the notices they post on the website. Response Manager enables
the recruiter to specify criteria to apply to responses from jobseekers, and
automatically to reject or accept jobseekers for interview according to these
criteria. In a description downloaded from the website on 27 November 2001, it
is described in the following terms:
'Response Manager is a tool through which you can manage the
complete online recruitment process
Response manager simplifies the recruitment process
by:
• Giving you a single tool to manage online recruitment within
totaljobs
• Allowing you to handle many candidates at once
• Automating repetitive tasks
• Handling all communications with candidates
Specifically, Response Manager makes it easy for you
to:
• Capture all response from job adverts placed on totaljobs
(apply online),
• Design and use online application forms
• Build a candidate database for your company
• Search the totaljobs candidates database using Candidate
Search
• Choose from a portfolio of screening questions and application
forms
• Screen candidates based on their online profiles
• Automatically rate candidates based on their profiles and
relevant experience
• Organise and manage many candidates at once
• Track candidates through the recruitment process
The following examples show some ways in which you can use
Response Manager:
• Match online applicants to a vacancy based on their skills and
salary requirements
• Receive an email whenever new candidates matching a vacancy
are registered on totaljobs
• Invite the top 10 rated candidates to participate in a
telephone interview
• Create shortlists of similar candidates to be retained for
future vacancies
• Reject all candidates that do not have a full, clean UK
driving licence ...'
Later in the document, the following passage occurs under the heading
'Selecting the best candidates using Response Manager'
'To determine if candidates are a good match for a vacancy, you
can specify within the vacancy exactly what sort of candidate is
sought.
You can specify absolute criteria (things the candidate
must/must not have) and criteria which would be beneficial but not
essential. For example, you can select that you only want candidates that
are eligible to work in the UK. This criteria [sic] can then be stored in
the vacancy. The profiles of candidates added to the vacancy through
searching the databases or by applying online will be checked automatically.
Response Manager will clearly show whether this criteria has been met by
each candidate.'
- Advertising material directed at recruiters
relied on by the claimants include (in documents exhibited by the claimants'
witness Mr Owen-Ward) a suggestion that use of the online services would
reduce the spend of recruiters on agencies; that totaljobs.com provide a
complete recruitment package; that it provides online access to CV's; that it
provides recruits with the opportunity to 'pre-screen' themselves so that 'you
get only those that are fittest for the job'. Totaljobs.com is described as an
online recruitment provider. There are a large number of references to
totaljobs.com as an 'online recruitment service'.
- Finally I should note that the Employment
Agencies Act 1973 (as amended) contains a definition of employment agency:
'the business (whether or not carried on with a view to profit
and whether or not carried on in conjunction with any other business) of
providing services (whether by the provision of information or otherwise)
for the purpose of finding persons employment with employers or supplying
persons with persons for employment by them.' (s.13(2))
The position of advertisers (whether in newspapers or tobacconists' shops)
is pre-served by specific exclusion:
'The reference in subsection (2) of this section to providing
services does not include a reference-
(a) to publishing newspaper or other publication unless it is
published wholly or mainly for the purpose mentioned in that
subsection;
(b) to the display by any person of advertisements on premises
occupied by him otherwise than for the said purpose;
....' (s 13(4))
- The question is whether these are 'Employment
agency services'. Mr Hobbs QC contended that the crucial point was as follows:
'The distinguishing feature of someone providing employment
agency services is that they act as an intermediary between the would-be
employee and the would-be employer. There is a channel of communication
between the two, there is an element of matching [sc. of job to employee]
but it is the significance of being an intermediary which ... will come at
the end of this case to be important ...'
- Mr Howe QC submitted that the important word was
'agency'. While an agent will necessarily be an intermediary between employer
and jobseeker, it does not follow, he submits that any such intermediary who
is interposed between the two for the purpose of facilitating the employment
of one by the other is an employment agency. He said that the essential
feature of an employment agency service was that
'the assessment of candidates for competence and job-fit through
the exercise of subjective judgement is essential to the provision of
employment agency services, this process normally (but not always) involving
interview.'
Such services, he submitted, do not encompass publishing even if
recruitment related. In general, I do not think it is unfair to say that the
defendants wished me to see totaljobs.com as a huge jobs notice-board, in
principle similar to but vastly more sophisticated and attractive than, job
advertisements in a tobacconist's window. The searching facilities merely
helped the candidates to find the right part of the notice board, and the
facilities for recruiters like the Response Manager reflected only the
recruiter's own criteria for the job. What the defendants did not provide was
any element of judgment or advice in respect of a particular candidate or
recruiter. All advice was general.
- It was agreed that the words 'included in Class
35' did not affect the meaning of the specification of goods. On this
question, Master Bragge permitted the parties to adduce evidence on the
services which would in the trade be encompassed by these words. Jacob J has
observed that there is considerable difficulty in construing specifications of
services which are in their nature likely to be less precise than
specifications of goods. In Avnet Incorporated v Isoact Limited [1998]
FSR 16, he said that 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.'
It is notorious that it is difficult to list all the services which a
particular individual may provide in carrying on a particular business. The
discussion centred on what people expect to see in an employment agency which
enables them to identify it as such.
- Before considering this question, I should deal
with the suggestion made by the defendants that the meaning of this
specification gelled as of the date of registration in 1986. Thus, what would
be understood as an employment agency service in 1986 is what matters. I do
not think this can be right. It seems to me that the nature of the register
requires the relevant date to be the date on which the acts complained of
started. If at that date the defendant had looked at the register, and asked
itself 'is what I am about to do the provision of an employment agency
service' the register would have done its job. Or do I think that the trade
mark proprietor's activities, either at the date of registration or
thereafter, to be immediately relevant to the question. No doubt the
proprietor selected the specification of services with a view to covering its
own activities at the date of registration, but that fact is of limited
utility in deciding the scope of the registration thereafter. The evidence of
the services actually provided by Reed Employment and its associated
businesses down the years was nonetheless of value in coming to some view of
what the relevant public (recruiters and candidates) expect an employment
agency to provide.
- Historically there is no doubt that Mr Reed
constructed his business on the personal interview with an individual (Reed
Employment calls the individual a 'consultant') whose task is to match the
qualities of the candidate to the available vacancies on the basis of
qualifications and the results of the interview. This process involves the
exercise of subjective judgment by the consultant. In addition, a candidate
would expect a Reed Employment consultant to provide useful incidental advice.
- Christine Little, who was called by the
claimants as an expert, has had extensive experience of the industry since
1975. She was the Chief Executive of the Federation of Recruitment and
Employment Services from 1993 to 1999 and is now the External Relations
Director of the Recruitment and Employment Confederation. She considered that
the element of matching candidate to job was vital. This is what the agency
did so as to take the burden off the client. The agency encouraged candidates
because to have a high quality stream of candidates in its turn encourages
clients. She regarded the interviewing of the candidate as an important part
of the service provided by the agency to match the candidate to the job.
- Mr Simon Howard equally has had wide experience
in the recruitment industry. He gave expert evidence on behalf of the
defendants. He certainly regarded the interview as an essential part of
providing a shortlist of candidates for a particular vacancy. I think it is
fair to him if I say that he simply did not accept that a machine could do the
task of an agency, for which human intervention and judgment in the selection
or matching process was in his view essential.
- Finally I should refer again to the anonymous
user who was quoted in the usability evaluation of totaljobs.com which took
place in September 1999 (paragraph 30 above).
'Some participants expected the site would provide them with
access to recruitment consultants, and this was most evident in their
expectation of being able to specify their skills and requirements, and that
CVs would be submitted to an agent "who won't even put you forward if
you're not suitable."'
- This quotation encapsulates the evidence of the
expectation among candidates of what an employment agency provides and thus
the core of what is meant by 'Employment agency services' in this context.
ARE THE SERVICES PROVIDED BY THE DEFENDANTS EMPLOYMENT AGENCY
SERVICES?
- I have found it surprisingly difficult to come
to a clear conclusion. I think that the better view is that the services
provided by the defendants are employment agency services because
totaljobs.com acts as a go-between clients and candidates. I accept that the
services do not include the matching by an independent consultant which one
would expect from an employment agency (or at least the claimants) and that
the element of judgment is not present. But totaljobs.com does enable the
client to establish a set of criteria to apply to those who respond to its
advertisements. I am conscious also that employment agencies do use
totaljobs.com to obtain candidates, and this suggests that its services as an
advertiser are more important than its other services. I think that this is
not sufficient to outweigh the other factors which I have identified.
INFRINGEMENT - FINDINGS IN RESPECT OF VISIBLE MATTERS
- Whether my view of the scope of the
specification of goods is right or not, and regardless of whether this case is
properly to be regarded as a case of identical marks or only of similarity of
marks, I am of the view that there is infringement under section 10(2)(b), or
in other words that the services are similar and the mark and sign are
similar. In the present case, I consider that the claimants have demonstrated
a substantial reputation in the word Reed with the general public in the
provision of job vacancies. There can be little doubt on the evidence which I
have summarised above that the confusion as to origin caused by the
defendants' use of the RBI logo, the Reed Elsevier logo, and the word Reed in
the copyright line is capable of causing relevant confusion, as the evidence I
have summarised above more adequately establishes. Where both mark and sign,
and the services specified, are merely similar, the assessment is still a
global one. I consider that the responses of users recorded in the usability
tests, and the internal reactions to them, are sufficient. Thus I conclude
that this is a case of infringement under section 10(2)(b), the defendants'
services being similar or identical to those of the specification of services
in respect of the mark is registered and their signs being similar to the
mark.
- I should deal with certain minor issues.
Paragraph (2) of the particulars of use of the allegedly infringing sign in
paragraph 11 of the Particulars of claim complains of the use of Reed on
posters at the stands at Harrogate in 1999. This must relate only to the
totaljobs.com stand. The other stands really cannot be said to relate to
employment agency services in any way (see paragraph 38 above). While this
exhibition is for the trade, consistently with my other findings I consider
the use of the RBI logo on the totaljobs.com stand an infringing use subject
to what I say below.
USE OF THE DEFENDANTS' 'OWN NAME': SECTION 11(2) OF THE 1994
ACT
- This finding is, of course, not the end of the
story. The use complained of consists either of the use of the logos or of the
corporate name of RBI. Does this provide the defendants with a defence?
Section 11(2) of the Act provides that:
'A registered mark is not infringed by-
(a) the use by a person of his own name or
address,
(b) the use of indications concerning the kind, quality,
quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics
of goods or services, or
(c) the use of the trade mark where it is necessary to
indicate the intended purpose of a product or service (in particular, as
accessories or spare parts)
provided the use is in accordance with honest practices in
industrial or commercial matters.'
- The origin of this provision is in the
Directive. There is a question, provoked by the joint statement of the Council
and the Commission in respect of the Trade Mark Harmonisation Directive
whether the words 'his own name' apply only to natural persons. The same
observation is made in respect of Council Regulation (EC) 40/94 on the
Community Trade Mark.
- The 'own name' defence had its parallel in the
law under the Trade Marks Act 1938, but the scope of that defence was narrow,
largely because it was qualified by the requirement that the use relied on
should not 'import a reference' to the registered proprietor or his goods.
That the defence extended to legal persons appears to have been established in
Ballantine v Ballantyne, Stewart [1959] RPC 47. But in any event the
matter may be concluded domestically by the Interpretation Act 1978, which
provides in the general definitions of Schedule 1 that 'person' includes 'a
body of persons incorporate or unincorporate'. However as a matter of
Community law the question is not acte claire and must if relevant be referred
to the European Court of Justice. So much appears from Scandecor
Development AC v Scandecor Marketing AB [2001] 2 CMLR 30
in the speeches of Lord Nicholls and Lord Scott of Foscote. No reference to
the Court of Justice has been made in that case since the parties have
composed their differences.
- The claimants contend that the question is not
relevant since the defendants cannot bring themselves within the proviso to
the section. The point for decision is whether the acts of the defendants are
in accordance with honest practices in industrial or commercial matters. The
claimants say that it is not in accord with honest practices in industrial or
commercial matters for a trader to engage in conduct which is likely to give
rise to deception or confusion as to the trade origin of the goods or services
he supplies, whether or not he is aware that his conduct will have that
effect. Put shortly, if the use complained of gives rise to passing off, then
it cannot take the benefit of section 11(2) because the proviso cannot be
satisfied. I shall leave the question of the 'invisible' uses to a later point
in the judgment. We are concerned here with the two logos and the copyright
line, together with the various statements of ownership. It will be recalled
that the statements of ownership of totaljobs.com left those who did not know
that there were two Reeds still confused.
- I think that the use of the word 'practices' in
the proviso positively requires an objective standard to be applied. Once the
practice is identified, the only question is whether that practice would be
considered to be honest by somebody in full possession of the facts. I do not
believe that a bona fide belief that the practice does not result in
deception, or the balancing of other considerations, such as the use of the
sign to indicate (truthfully) a connection in the course of trade amongst
other customers who will not be deceived, is an answer. Thus the fact that
clients are not deceived and that Reed wanted to establish a brand continuity
with the clients is irrelevant if candidates are deceived by the use of the
corporate name.
- Use on invoices and the like presented to
clients is different. Clients are not on the evidence misled. Such a use is it
seems to me in accordance with honest practices and no complaint can be made,
and the defendants are entitled to the benefit of the proviso. At the
Harrogate 1999 Exhibition, I consider also that the benefit of the proviso
should be available. But I consider that there is a more than negligible risk
that visible use of the word 'Reed' on the website is likely to cause
confusion among candidates.
INVISIBLE MATTERS: OPTIMISATION OF THE WEBSITE: METATAGS AND
INFRINGEMENT
- The first observation which I should make is
that these matters are really not foreshadowed in the pleadings. The question
of the metatags is mentioned in Further Information provided on 8 November
2000, which refers to metatags on the site, the use of the keywood REED on
Yahoo! and the use of the keyword REED in respect of banner advertising. Since
(subject to the Yahoo! point) the defendants have not used REED as a keyword
to trigger banner advertising, the full scope of the objection was not made
clear until the evidence of Mr Roche was served on 21 December 2001. The
defendants objected, but I permitted the matters to be pursued for what it was
worth. In fact, a disproportionate amount of the trial was spent in
investigating purely factual issues which, had they been properly considered
by the claimants at an earlier stage could have been included in an orderly
way with less confusion. Nonetheless, I consider that there is more than
enough to enable me to come to a conclusion.
- The invisible matters really relate to four
distinct matters (Mr Hobbs QC says five): (1) the use of the word Reed on the
website in metatags where it will not be visible to human users; (2) the use
of Reed in the directory enquiries (3) the banner advertisements including the
fake search results on purchased keywords and (4) the special case of Yahoo!
where 'Reed' was a keyword for banner advertising until November 2000.
- Both section 10(1) and 10(2) require use of the
sign in the course of trade for there to be infringement. I take this to mean
that the sign is to be used for business purposes. It appears clear that the
use must also be what has often been called trade mark use, that is to say,
use whose purpose or effect is to indicate the trade origin of the goods or
services. I think that the use of the word 'reed' in the phrase 'reed business
information' satisfies this test. What gives me concern in the context of this
action (and is a point on which the Lanham Act authorities relied on by the
claimants are of great interest but little assistance) is the relevance of the
use if its only effect is to allow the defendants' website to appear in the
list of search hits but lower than the plaintiffs' website, provided that
the defendants' site does not use the word when it is accessed. In other
words, does the user of a web search engine suppose that when he or she
searches against, say 'Reed jobs' the sites raised have any connection with
the claimant? Obviously if they are to do so, the search must include the word
'Reed'. But if that search is done, the exhibits show many results having no
connection with the claimants at all.
- I was not addressed, and there was little
evidence, on what users of search engines think of the result. I suspect that
when there is a 'description' metatag, which is displayed by the search engine
alongside the hit, that will be most important. There are examples of the
early metatags coming up in search results, as for example this result from
www.totaljobs.net:
'Total Jobs - the Recruitment Service from Reed Business
Information.
Totaljobs is the new recruitment service from Reed Business
Information. Currently advertising jobs in IT, electronics Engineering,
Property, Motoring, Web Jobs, Science ...'
- This seems to me to be an infringing use: it is
akin to having the labels printed and attached to the goods, but not yet
having moved them outside the factory. But where no such material appears on
the search engine results, why should it infringe? The argument by analogy
suggests that the search engine is to be taken to be the eyes of the user, but
I suspect that is a poor analogy. Like many computer applications, the
intervention of a human is essential to sort the rubbish from the potentially
interesting in any web search. Nonetheless, my view is that the concept of use
is wide enough to cover invisible use in metatags which is visible in the
search results. When a metatag results in a visible display of the sign,
defendants should generally be left with the existing defences. If the only
use of the sign which provokes the search engine to list the site is a use
otherwise permissible then that should be a defence, since that is the use the
user will see if the site is accessed.
- To try to improve on a use which might otherwise
be permissible (for example, by including among the metatags a phrase for
which an own name defence is available in such a way that search engines would
rank the site more highly than if the permissible visible use alone were made)
is, the claimants say, open to objection. An invisible use would not, it seems
to me, satisfy the requirements of section 11, because of its invisibility.
Furthermore, to use a name or address in this way might well not satisfy the
proviso. But does it fall within section 10? My view is that it does, because
ultimately its purpose is to use the sign to suggest a connection which does
not exist. It is difficult to spell this out of section 10(1), but rather more
easy to spell it out of the words of 10(2). The reason that section 10(1) does
not refer to a likelihood of confusion is that in the case of identity of
marks and goods, that likelihood is presumed: see the tenth recital to the
directive and its reference to absolute protection. The sign in a metatag is
being used to suggest that this site is to be treated in a manner appropriate
to the way in which the trade mark owner's site should be treated. This, is
seems to me, is infringement. The short test, which must be applied with
caution, is whether the sign tells the truth about the site.
- The foregoing considerations permit a short
answer to the banner advertisements: only those triggered by the word 'Reed'
specified by the defendants are objectionable. If the defendants do not
specify Reed, the fact that they purchase 'jobs' and then come up in a search
for 'Reed jobs' with a banner is not due to any use of the sign Reed by them,
and cannot be infringement.
- Furthermore, it seems to me that it will not
normally be possible to prove loss merely by virtue of the fact that the site
appears on a particular search, if nothing in the search results or in the
site itself uses the infringing sign. Merely to present the site at some point
in a list of results should not be sufficient.
- In the present case, the issue is resolved for
the future by the fact that, subject to legacy pages still existing on the
web, the defendants' removal of the visible sign from the site has largely
preceded its elimination from the invisible parts. I do not consider that what
is now left could possibly justify any form of injunctive relief.
PASSING OFF: CONCLUSIONS
- This is not a case of deliberate passing off in
the sense that the defendants were willing to accept confusion in the hope
that it would bring them more business than would otherwise be the case. All
the defendants were emphatic that they were aware of the possibility of
confusion and did not wish to contribute to it. I accept this evidence. But
the evidence of a risk of passing-off is strong in those cases where I have
identified infringement, with the exception of the metatags. This is not an
action in respect of mere confusion. So far as the use of the logos and the
copyright line on the website is concerned, it is an action in respect of
confusion giving rise to a risk of deception. The classical trinity of
ingredients in a passing off action, reputation, confusion leading to
deception, and damage, are present.
- The defendants insist that totaljobs.com
represents a natural development of their recruitment-associated publishing
business in the light of the vast potential of the internet as a medium both
for publication of the vacancies and for processing the responses of
candidates. I have no doubt that this is correct. It is, however, a different
business, and to move into it involves moving towards the business conducted
by the claimants in such a way that the claimants and defendants become
competitors. A defendant may not use his own name if to do so results in
deception. In Rodgers v Rodgers (1924) 41 RPC 277, Romer J put it this
way in a phrase frequently cited and approved by the House of Lords, at least
by a majority, in Parker-Knoll v Knoll International [1962] RPC 265:
'To the proposition of law that no man is entitled to carry on
his business in such a way as to represent that it is the business of
another, or is in any way connected with the business of another, there is
an exception, that a man is entitled to carry on his business in his own
name so long as he does not do anything more than that to cause confusion
with the business of another, and so long as he does it honestly. To the
proposition of law that no man is entitled so to describe his goods as to
represent that the goods are the goods of another, there is no
exception.'
- The defence afforded by this passage is narrow.
The reference to honesty is key, and in my judgment the same considerations
apply as apply in respect to the proviso to section 11(2) (above, paragraph
124). The test is objective, and in any event cannot be satisfied if the
defendant knows of a risk of deception in fact. The defendants relied in this
connection on the judgment of Lord Greene in the Court of Appeal in Marengo
v Daily Sketch [1992] FSR 1 (Judgment of 17 May 1946).
'No one is entitled to be protected against confusion as such.
Confusion may result from the collision of two independent rights or
liberties, and where that is the case neither party can complain; they must
put up with the results of the confusion as one of the misfortunes which
occur in life. The protection to which a man is entitled is protection
against passing off, which is a quite different thing from mere confusion.
If all that a trader is doing is to carry on trade in his own name, and in
disposing of or advertising his goods does no more than make the perfectly
true statement that the goods are his goods, no other trader is entitled to
complain. On the other hand, where the line is overstepped and the
description applied to the goods amounts to a representation - not
necessarily, of course, a dishonest one - that the goods are the goods of
the other trader, then you have a case of passing off.'
- It seems to me that this probably only states
Romer J's test in other words: if there is passing off, then that is enough.
In other words, the only defence is 'no passing off', because there is no
deception leading to damage to the relevant goodwill.
- My conclusions on passing off therefore mirror
my conclusions on infringement, so far as the visible uses are concerned. So
far as the invisible uses, the answer again seems to turn on the question
whether the defendants can be said to be responsible in any way for the
appearance of the site in response to a search against 'Reed', and, if so,
what the nature of that responsibility is. Again, my conclusions echo the
conclusions on infringement.
CONCLUSIONS
- The action both for infringement and for passing
off succeeds to the extent I have indicated. Having regard to the changes made
to the website, I am doubtful whether this can be a case for an injunction. I
should also indicate that my findings have turned upon an assessment of a real
risk of infringement and of passing off, and I am in some doubt whether I
should order either an enquiry as to damages or an account, and, if so, on
what basis. As at present advised, I consider that the claimants are entitled
to their costs of the action having regard to the way in which the case (and
the website) developed, but this is only a preliminary view. I will hear
counsel on the question of relief generally, and on costs.
