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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RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Rosanna Cooper

Dr Rosanna Cooper BSc (Hons); CSci CChem MRSC; CChem FRSC; Dip Intellectual Property Law and Practice (Bristol), Solicitor; Attorney-at-Law (Grenada).

Dr Cooper is the managing partner of RT Coopers, Solicitors based in the City of London, England. She specialises in intellectual property (IP), biotechnology, pharmaceuticals, technology transfer and data protection. Dr Cooper was a partner in a West End firm in London and a senior lawyer with several City law firms before establishing RT Coopers. Dr Cooper studied for her Ph.D. in organic and medicinal chemistry at Kings College, University of London and pursued her postdoctoral research with SmithKline Beecham (now Glaxo SmithKline). She later worked as a senior pharmaceutical and paper chemist for Eli Lilly and Hercules respectively. Dr Cooper now advises international clients on IP in relation to a range of industries including, the biosciences, chemical sciences and pharmaceutical industries. Her role also extends to drafting, advising and negotiating commercial contracts, licences, joint ventures, collaborations, mergers and acquisitions especially the intellectual property and IT aspects of such corporate transactions. Dr Cooper advises start-ups, universities, spinout companies, small to medium sized enterprises and corporate clients.