VIRTUOSO LEGAL SUPREME COURT APPEAL VICTORY: ARGOS UK v. ARGOS US

VIRTUOSO LEGAL SUPREME COURT APPEAL VICTORY IN ARGOS VS ARGOS
image of the UK Supreme Court, Parliament Square by Anthony O’Neil.

Virtuoso Legal’s client, Argos Systems Inc., (“Argos US”) receive closure from the Supreme Court in case relating to alleged trade mark infringement, passing off through use of the domain name “www.argos.com” and Google AdSense deployed on the site, brought by Argos Limited (“Argos UK”).

Virtuoso Legal’s IP Protect litigation team, led by Philip Partington, have secured a further ruling, this time in the Supreme Court, in the case of Argos Limited (“Argos UK”) vs Argos Systems Inc (“Argos US”), successfully defeating Argos UK’s attempts for permission to appeal to the Supreme Court.

Background

Our readers may recall that, in 2017, the IP disputes team at Virtuoso Legal defeated Argos UK’s claim against Argos US for alleged infringement of its trade marks and passing off in relation to Argos US’s use of Google AdSense on its website at www.argos.com. Please see our earlier blog here.

In 2017, Argos UK appealed against the trial judge’s decision arguing that he had erred when considering the unfair advantage arguments and that Argos US should be found liable for trade mark infringement. Argos UK were unsuccessful at the Court of Appeal. Please see our earlier blog here.

The Supreme Court

In late 2018, Argos UK sought permission to appeal, this time to the Supreme Court, the highest court in England & Wales. In particular, Argos UK’s legal team, consisting of TLT, James Mellor QC and Jonathan Hill argued that the Court of Appeal’s earlier reliance upon established case law was “wrong” because “it directly conflicts with the plain words used in the leading judgment of the CJEU on the issue C-487/07 L’Oreal v Bellure”. In summary, Argos UK contended that merely taking “commercial advantage” of another’s trade mark is sufficient for that advantage to be “unfair” and therefore an infringement of that trade mark.

In response, Argos US’s legal team, consisting of Virtuoso Legal, Martin Howe QC and Jaani Riordan argued that permission to appeal from the Supreme Court should be refused because:

  1. Argos UK’s proposed ground of appeal did not meet the threshold test for the grant of permission as it was not reasonably arguable in the light of established principles of UK and EU law;
  2. Argos UK’s proposed ground did not raise a point of law of “general public importance”, as the Court of Appeal’s reasons for its earlier decision did not raise the point of law which Argos UK contends it did; and
  3. It would be inappropriate to allow permission to appeal to the Supreme Court as it would not result in the case being decided in Argos UK’s favour in light of a number of other defences upheld by the earlier courts.

The Supreme Court’s Decision

On 18 March 2019, the Supreme Court, consisting of Lords Wilson, Carnwath and Lady Arden, refused Argos UK’s application for permission to appeal as it did “not raise an arguable point of law which ought to be considered at this time”. In addition, the Supreme Court refused Argos UK’s attempts for questions of European law to be considered by the Court of Justice of the European Union, stating “the question raised is irrelevant” and “the Court’s existing [decisions] already provide[d] a sufficient answer”. Finally, Argos UK was, once again, ordered to pay Argos US’ legal costs.

Philip Partington, Head of IP Protect and the London office of Virtuoso Legal said:

“During the course of the proceedings, we successfully defeated Argos UK at two interim applications in relation to their disclosure, obtaining substantial costs awards in our client’s favour. We then went on to defeat Argos UK at trial, with a further substantial costs award in our client’s favour.

In total, Argos UK had paid well in excess of £330,000 in costs to our client. Despite this, Argos UK sought to challenge the reasoned decisions of the trial judge and the Court of Appeal and seek permission to the Supreme Court for permission to appeal and references to the Court of Justice of the European Union.

Thankfully, the Supreme Court has denied Argos UK any further routes to appeal and brought these proceedings to a definitive conclusion.

Overall, it is most unfortunate that Argos UK has pursued our client in this way in relation to adverts which were removed by our client many years ago. However, our client, who is a US company, must be given a great deal of credit for placing their faith in the justice of the UK courts.”

Jonathan Fox, President of Argos Systems Inc said:

“I am grateful for everything Philip Partington and the rest of the group at Virtuoso Legal has done for us throughout this case.

Everyone at the firm, along with Mr. Jaani Riordan and Mr. Martin Howe QC, worked tirelessly to get to where we are, and they certainly deserve all the credit.

The Royal Courts of Justice is quite an impressive institution, and I have the utmost respect for the judges and their decisions. There is obviously a lot of thought and care taken by the judges to ensure fair and correct decisions.

It goes without saying, I am very thankful that, in this case, they were in our favour.”

For more information about this judgment, or to speak to our team of solicitors, contact: enquiries@virtuosolegal.com.

Or call:

0113 237 9900

Virtuoso Legal Supreme Court Victory in Argos vs Argos was written by Philip Partington

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