Typing a website address into your internet explorer would not necessarily have you thinking about Intellectual Property (IP) straight away, but the recent High Court decision in the case of Argos v Argos is a good reminder to take good care of your IP in domain names.
Taking the Argos name in vein: protecting IP in your domain
In the blue corner we had Argos Limited (Argos), well known and loved UK retailer famous for excited shoppers flicking through its billion-page catalogues and ordering in store with the tiny pens and forms. And, in the red corner, we had Argos Systems Inc (ASI), a US company specializing in Computer Aided Design and Product Data Management solutions. The prize: the much coveted domain name, Argos.com.
Back in 1992, ASI registered the domain name “Argos.com”. Argos then registered the domain name Argos.co.uk some years later. Fast-forward to 2008 and ASI’s website included Google AdSense ads to all visitors. Importantly, from 2012 to 2014, only web visitors from outside the Americas saw the ads. Argos claimed for trade mark infringement and passing off (an action similar to trade mark infringement) since a large amount of visitors to ASI’s website were actually looking for Argos.co.uk. Argos’ case was simple: ASI were unfairly and unjustly trying to generate revenue from visitors looking for the Argos website, most of whom were based in the UK and Ireland and were therefore exposed to ASI’s Google AdSense ads.
What are domain names and why are they important?
Domain Names are defined by the World Intellectual property Organisation (WIPO) as:-
“The human-friendly forms of Internet addresses and are commonly used to find web sites.”
Although we’re not sure quite how ‘human friendly’ some domain names are, the WIPO definition is accurate as domain names enable surfers of the web to locate specific goods or services by finding websites. As such, they are highly sought after and form the basis of many intellectual property disputes where companies seek to protect key identifiers of their business.
The battle of the Argos
So what was the outcome? Being annoyed that so many website users were struggling to find the correct site, Argos argued that usage of Google Ads combined with the domain name Argos.com amounted to an infringement of their trade mark. Unfortunately, the High Court was not persuaded and the retail giant failed in its actions. The Court found that they had consented to ASI’s use of Argos in its domain when it signed up to Google’s terms and, perhaps more importantly, because UK consumers were not specifically targeted.
It is worth noting that the use of the domain alone was not enough for Argos to establish a trade mark infringement claim, which highlights the importance of securing solid intellectual property rights in one of your business’ key assets: its name!
A key takeaway from this case is to never underestimate the value of your business identity; protecting your intellectual property is a must. Registering a domain name is a very straight forward process when using hosting service companies, such as ‘godaddy.com’ but be live to potential threats of cybersquatters who register names linked to well known companies or brands in the hope of later reselling at a huge profit. The well-known pizza company, Dominos, were allegedly forced to cough up six figures to re-purchase their domain name back from cybersquatters a few years ago when their domain name contract expired and they didn’t promptly renew it. We’re sure they won’t be making that mistake again!
What we can do for you
Protecting your intellectual property and helping your business stand out from the crowd can often be a difficult task. At Hybrid Legal, we can register your trade mark in the UK, Europe and the rest of the world. Unlike a traditional law firm, we don't charge by the hour and we won't charge for each phone call or email. Instead, all of our fees are fixed and agreed with you upfront. Why not contact us today to discuss your legal requirements in further detail, we’ll be delighted to talk to you.
By Louis Muncey
THE CONTENTS OF THIS ARTICLE ARE INTENDED SOLELY FOR INFORMATION PURPOSES ONLY AND SHOULD NOT BE CONSTRUED AS LEGAL ADVICE OR FINANCIAL ADVICE OR OPINION IN ANY SPECIFIC FACTS OR CIRCUMSTANCES.
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