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*16Avnet Incorporated v Isoact Limited

In the High Court of JusticeChancery Division

28 July 1997

[1998] F.S.R. 16

Before: Mr Justice Jacob

July 28, 1997

Trade markInfringementAdvertising and promotional servicesInternet serviceprovidersWhether identical servicesWhether services within classRectificationInvalidityApplication for summary judgment.

Trade Marks Act, ss.10(1), 46, 47.

RSC Ord. 14.

This was an application for summary judgment by the plaintiff for trade mark infringement. Theplaintiff sold goods by catalogue and on a Web page. As part of this business it carriedadvertisements for the goods of a variety of suppliers, for which a charge was made to thesupplier. It was the registered proprietor of the trade mark AVNET registered for,inter alia,advertising and promotional services, included in class 35. The defendant provided Internetservices, in particular to the aviation industry. The services provided included a facility to allow itscustomers to advertise on the customer's own Web page. In so doing it did nothing more thanprovide a place where its customers could display their own advertisements. It used the namesAviation Network and Avnet, and had a website with the address: www.avnet.co.uk.

The plaintiff's case was that the defendant's activities amounted to trade mark infringement under

section 10(1) of the Trade Marks Act 1994. The defendant argued that the services in questionwere not identical, in that the defendant's services were not advertising and promotional servicesand that they did not come within class 35. There was evidence that the Trade Marks Registryconsidered that if an Internet service provider were actually renting out advertising space on awebsite to customers it might fall within class 35, but that if it were just providing the customerwith access to the Internet it would fall within class 42. The defendant also counterclaimed forrectification of the register or a declaration that the mark was invalid under sections 46 and 47 ofthe Trade Marks Act 1994, on the ground that the plaintiff did not use the mark for servicescovered by the registration.

Held, refusing summary judgment:

(1) Specifications for services should be confined to the substance, or *17 core, of the possiblemeanings attributable to the words and phrases used.

(2) By merely providing a facility to allow its customers to advertise on the customer's own Webpage. The defendant was not in substance providing advertising and promotional services.

(3) To decide whether goods or services fell within a particular class it was necessary to look atthe Trade Marks Registry practice at the time of registration. What the defendant did was notwithin class 35, as explained by Registry practice.

GE Trade Mark [1969] R.P.C. 414followed .

(3) It was arguable that the plaintiff did not use its mark for services covered by the registration.The plaintiff was in the business of selling goods by catalogue. The carrying of advertisementsfor suppliers, even though a charge was made, was no different from a supermarket proprietordoing a special promotion and asking the manufacturer to contribute to the cost.

Quaere:

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whether the specification of retail sales was registrable under theTrade Marks Act 1994.

The following cases were referred to in the judgment:

Dee's Application [1990] R.P.C. 159.

GE Trade Mark [1969] R.P.C. 418.

Representation

Colin Birss instructed by Field Fisher Waterhouse appeared on behalf of the plaintiff. TomMoody-Stuart instructed by Hobson Audley Hopkins & Wood appeared on behalf of the defendant.

JACOB J.:

This is an application underOrder 14for summary judgment in a trade mark case. The plaintiffs puttheir case solely undersection 10(1) of the Trade Marks Act 1994(identical marks and services). Theplaintiffs' business consists of selling goods by catalogue: an actual, physical catalogue. They also

have a Web page. The registered trade mark is the word Avnet registered in class 35 under thefollowing specification of goods:

Advertising and promotional services; rental and leasing of advertising apparatus, hoardings,displays, screens and billboards; rental and leasing of electronic and computer-controlledadvertising apparatus, displays, boards and screens; all included in class 35.

Argument has centred on the first part of the specification: Advertising and promotional services,which it is accepted must all be included in class 35. I will come back to that second qualification ina moment.

The defendants have a quite different business from that of the plaintiffs and it is not suggested that

they are commercially in conflict. They are what is known as an Internet Service Provider (ISP). Theparticular interest of the defendants is in relation to aviation. The name which they use is AviationNetwork and they also use Avnet. They have a website address: www.avnet.co.uk. To theircustomers they provide a service which consists, *18amongst other things, of giving their customersan e-mail address and the customer's own Web page. The promotional advertisement they put outthemselves on the Internet says as follows (I concentrate on the two passages relied upon by theplaintiffs):

You get your own Web space to publicise yourself, your ideas and your products.

Later on:

Buy and sell your products and services.

The other things mentioned are important, however. The defendants say that you should subscribe totheir service, you can ask the experts for solutions and opinions on any subject, you can getimmediate answers to tough, technical questions, you can participate in the shaping and cutting edgeof communications technology and you get access to worldwide sources of information, includingweather and other scientific research. Any other ISP will give you much the same sort of thing.

Essentially, the plaintiffs sell technical goods via a physical catalogue and a Web page, and thedefendants provide Internet services. The conflict arises because of the coincidence of the use of theword Avnet. The conflict happens to be in this country, because both parties are either within the

jurisdiction or have activities within the jurisdiction, but the conflict could equally have been betweentwo companies in wildly different parts of the world.

The plaintiffs' real concern is not that the defendants are going to compete with them in any way. Thedefendants do not. The concern is that there will be confusion over the word Avnet, that search

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engines and the like will produce the wrong Avnet and the man looking for them might either give upor somehow get himself into some other sort of muddle. It is difficult to see how the latter could occur,because he would see immediately that he is not getting advertisements for semiconductor chips andthe like and things to do with aviation instead.

It is a general problem of the Internet that it works on words and not words in relation to goods or

services. So, whenever anyone searches for that word, even if the searcher is looking for the word inone context, he will, or may, find Web pages or data in a wholly different context.

That is the reason why the plaintiffs bring these proceedings. Of course, users of the Internet alsoknow that that is a feature of the Internet and their search may produce an altogether wrong Webpage or the like. This may be an important matter for the courts to take into account in consideringtrade mark and like problems.

I now turn to the facts of this case in a little more detail. What the defendant is doing in providing afacility for their customers to advertise on the customer's own Web page. It follows, say the plaintiffs,that the defendants are providing advertising and promotional services.

Mr Moody-Stuart for the defendant says that is not so. In argument, he drew an analogy of land,saying that the defendants were really providing land upon which their customer could build whatever

they wanted to build, whether it be an advertising hoarding or a building or whatever. Another*19

wayhe put it was this, that a man who provides a facility for building a library is not a librarian. It is fair tosay that this case invites one to think of analogies. Yet another anology was the activity of atelephone company which provides a particular facility enabling the customer to do telesales. Is thattelephone company really providing advertising and promotional services?

The answer I think depends on how widely one construes this expression advertising andpromotional services. It is not an unimportant question, because definitions of services, which I thinkcover six of the classifications in the respect of which trade marks can be registered, are inherentlyless precise than specifications of goods. The latter can be, and generally are, rather precise, such asboots and shoes.

In my view, specifications for services should be scrutinised carefully and they should not be given awide 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.

Here, advertising and promotional services requires one to look at the essence of what thedefendant is doing. The essence of what these defendants are doing is not providing advertising andpromotional services in the way that, for example, an advertising agent does. They do no more thanprovide a place where their customers can put up whatever they like. They are not assisting thecustomers to write their copy, they suggest their customers can write their own copy if they want to.But they are not in any way even requiring their customers or expecting their customers to put upadvertisements. The customers can put up whatever they like. I do not think that in substance whatthese defendants are doing is providing advertising and promotional services.

Next, on the question of infringement, one asks whether, assuming I am wrong, does what thedefendants are doing constitute advertising and promotional services included in class 35?

These words included in class X in a specification of goods not infrequently cause difficulty. Youhave to look at the specification preceding these final words to see whether what the defendant isdoing within the scope of that and then you have to ask the extra question: are they included in classX?

It is settled, at least at first instance, that to answer that second question one has to look at theTrademark Registry practice to see whether the Registrar in practice at the time of registrationincluded the particular service or goods within that class (see GE Trade Mark [1969] R.P.C. 418at458). This is not always easy, especially if the kind of goods or services did not exist at the time ofregistration.

Here, the defendants' solicitor has made enquiries of the Trademark Registry in an informal way bytelephone. The officer concerned was asked about the provision of services to the advertisingindustry in the context of services provided by an ISP and she apparently said that if the ISP was

actually renting out advertising space on a website to customers, then it might possibly fall withinclass 35, but if it was just providing the usual *20services of an ISP by providing the user with access

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to the Internet, then it would fall in class 42. She also indicated that she thought that advertising andpromotional services in class 35 were the services an advertising agency provided, subject toproduction of advertising material, the rental of advertising space and the rental of hoardings andbillboards.

This cannot be the last word on the subject (this is Order 14), but an advertising agency does notnormally just hire a billboard; it normally hires a billboard for a particular advertisement. It advises itscustomers on how to advertise and where to advertise and where best to advertise at a given price.None of these things the defendants do.

I do not think that what the defendants do falls within class 35, as explained by the Registrar's officer.Certainly it is not shown to be within class 35 to Order 14 standard. So I do not think there isinfringement of the mark established on that ground.

It is not necessary to go on further, but since the matter was argued, I will do so. The defendantscounterclaim for rectification of the register or a declaration that the mark is invalid under section 46and section 47 of the Trademarks Act. It is common ground that although two grounds are reliedupon, they effectively boil down to the same thing: do the plaintiffs use the mark for services coveredby the registration?

It seems to me that it is well arguable that they do not. What the plaintiffs do is to run a business ofselling goods by cataloguea catalogue equivalent of a retail business. In the course of that businessthey therefore carry advertisements of the goods of a variety of different manufacturers. In relation tothose advertisements they enter into discussions with their suppliers, because it is important in atechnical catalogue that the goods are described accurately. So they enter into discussions as to theprecise description of the goods to be carried in their catalogue. That in itself I do not think couldamount to the provision of advertising and promotional services. It is no different from a supermarketdiscussing and obtaining material for a special promotion of a particular manufacturer's goods.

However, the plaintiffs do more than that. They not only enter into discussions with their suppliers, butthey charge the suppliers something for carrying the advertisement in their catalogue. Again, this ismuch the same as a supermarket proprietor, going in for a special promotion of a manufacturer'sgoods and asking the manufacturer to contribute to the cost of the special promotion.

Essentially, though, these plaintiffs in their retail sales by catalogue and the supermarket in its retailsale from a shop are conducting the same function. They are conducting the business of retail sales.It has not been decided whether a specification of retail sales or the like is registrable under thecurrent Act. It was not registrable under the old Act (see Dee's Application [1990] R.P.C. 159). If it isregistrable, it ought not to be registrable by a side wind of advertising and promotional services inclass 35, when the real commercial activity is the sale of goods as such. I do not decide the point,however. It is manifest that this is not a case suitable for judgment under Order 14. I therefore rejectthe application.

*21

2015 Sweet & Maxwell

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