Intellectual Property – Trade Mark Infringement – Advertisement

By Rosanna Cooper

In Wolters Kluwer Ltd v Reed Elsevier Ltd (2005), the claimant published online seminar services for accountants under a service called CCH Seminars Online. The material for the service was provided by Online Tutors until July 2005, when this relationship was terminated. Online Tutors was engaged by the defendant to provide material for a competing service called Tolley’s Seminars Online.

In the 21 July 2005 edition of the magazine called Taxation, the defendant advertised its online tax and accountancy seminars and declared that it was the same service as that of the claimant’s. The defendant also advertised that they would offer subscribers of CCH Seminars use of Tolley’s Seminars Online free of charge until expiry of the CCH Seminars subscription.

The claimant objected to these advertisements and sought a correction notice. The defendant issued a notice making it clear that CCH was continuing with its own service. The claimant was unsatisfied with this notice and objected requesting a further correction notice on the grounds that the notice still sought to rely on the claimants name and reputation to try to divert customers to the defendant’s competing service.

The claimant therefore issued a claim for trade mark infringement and applied for an injunction to restrain infringement of a registered trade mark contrary to s.10 of the Trade Marks Act 1994.

The claimant argued that the defendant’s use of the claimant’s mark:

▪ was dishonest;

▪ took unfair advantage of the claimant’s mark; and

▪ was detrimental to the distinctive character or repute of their trade mark.

The defendant did not accept the above allegations and contended that the use of the mark fell within s.10 (6) of the Trade Mark Act 1994, whereby it is permissible to use a trade mark for the identification goods and/or services.

The court held that:

▪ the use of the claimant’s trade mark in the defendant’s advertisement fell within s.10(6) because the mark was identifying the service provided by the defendant; and

▪ the advertisement was not dishonest but rather a form of comparative advertising.

The application was therefore dismissed.

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