umenie-istockphoto-com-argos-
20 February 2017Trademarks

Retailer Argos beaten in domain name battle at UK court

UK retailer Argos suffered a knockout blow in a domain name dispute with US software company Argos Systems over the domain name  argos.com.

Back in July 2015, Argos sued Argos Systems for trademark infringement, accusing the software company of infringing Argos’s marks by allowing its  argos.com domain to feature Google AdSense advertising.

The retailer claimed that because Argos Systems allowed people in the UK to see the Google adverts, it was “targeting” UK consumers with online advertising and abusing and profiteering under the ‘Argos’ trademarks.

Argos owns two European Union trademarks, numbers 450,858 (class 35—advertising services) and 2,057,263 (class 35—retail).

The retailer registered the domain  argos.co.uk in 1996 and launched a website in 2004.

Argos Systems registered its domain in 1992, and only trades in North and South America.

The UK store didn’t object to Argos Systems’ use of the domain as a website promoting its software, but rather the use of the domain in conjunction with adverts.

By 2004, a substantial number of UK and Irish residents were visiting the .com site, which featured a number of adverts for Argos (as a result of the retailer’s participation in Google AdWords).

Argos argued that the use was “abusive” because it amounted to “unfair free-riding” and was liable to damage the distinctive character and reputation of Argos’s trademarks.

The software company fought back against the retailer, claiming that the adverts were not targeted at any one location in particular.

It argued that the average consumer wouldn’t regard the contents of the software company’s website as being meant for them and would realise very quickly that the site was nothing to do with Argos and leave it.

Over seven years, the adverts on the site generated around $100,000 in revenue for Argos Systems.

On Wednesday, February 15, the English High Court found in favour of Argos Systems.

Mr Justice Spearman, sitting as deputy judge, held that Argos Systems had not infringed the ‘Argos’ trademark and that its use of ‘Argos’ was for its own name and in accordance with honest practices.

“Although Argos has goodwill, Argos has not established a material misrepresentation to the public, or damage or the likelihood of damage, or that Argos Systems’ domain name is an instrument of fraud,” he said, concluding that Argos’s claim of passing off had failed.

Elizabeth Ward, principal solicitor of Virtuoso Legal and representative of Argos Systems, said: “This case goes to show the real value of intangible assets in a company’s portfolio. The days when businesses fought over prime real estate are over. Today’s economic value is based on clicks not bricks.”

Pekka Moilenen, president of Argos Systems, added: “The decision confirms that my company was merely conducting its business legitimately.”

A spokesperson for Argos said: “We are disappointed with the judgment, and we are currently considering it carefully.”

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
10 October 2018   The English Court of Appeal yesterday delivered a blow to UK retailer Argos in its trademark and domain name dispute with US software company Argos Systems.