Outsourcing specialist, AdvanceTrack, has won a landmark two-year High Court case against one of its direct competitors, GI Outsourcing, after the latter used its brand unlawfully in a targeted Google Adwords campaign.
His Honour Judge James Tindal passed his judgment on the long-running battle between the two outsourcing companies, held at Birmingham Civil Justice Centre, ruling in favour of AdvanceTrack.
He concluded that GI Outsourcing, through a third-party Midlands-based marketing agency, had infringed the trademark of AdvanceTrack and was also liable for passing off AdvanceTrack’s trademark as its own – breaching laws protecting brands from companies illegally using Google to target their competitors.
AdvanceTrack [the trading name of E-Accounting Solutions Limited], a specialist outsourcer of accountancy and audit services and a member of the Institute of Chartered Accountant of England and Wales (ICAEW), was one of at least four companies being targeted by Greater London-based GI Outsourcing, but the only one to see the case through to the High Court.
“This was a six-figure risk, but it was crucial to protect our brand, our competitors’ brands, and the wider industry,” said Vipul Sheth, founder and managing director of AdvanceTrack, who has pledged to award 100 per cent of any damages they receive following the judgment to charity.
“This wasn’t ever about the money, it was about holding our industry to higher standards, so it was very disappointing we had so much resistance from GI Outsourcing in this case. We felt it was obvious they were infringing our trademark – as well as potentially others – and marketing through Google Adwords unlawfully.
“We cannot and should not stand for this type of behaviour. The judgment is a win for us, but more so it’s a win against bad practice, which if left unchallenged could be a scourge on our profession. There are a handful of firms in this space, including ourselves, that are working incredibly hard to raise standards, and when organisations act like this, they are damaging those efforts.”
Harrow-based GI Outsourcing [the trading name of Global Infosys Limited] is owned by Macalvins Group and infringed UK trademark laws – which are based on EU Law – when launching its Google Adwords campaigns using AdvanceTrack and three other known outsourcing competitors during the Covid-19 pandemic period, between March and May 2021.
GI Outsourcing claimed and the judge found that it was an error by its marketing agency, however, emails show CEO Tariq Husain involved in active discussions about the campaign and the keywords it would be bidding for. The judgment says Mr Husain “plainly authorised – indeed instructed – those adverts”.
The judge ruled against GI Outsourcing, noting that its director Mr Husain acknowledged the value of the reputation of the AdvanceTrack mark. He said GI Outsourcing had tried to “use its [AdvanceTrack’s] reputation” and included AdvanceTrack’s brand in error in its ‘Ad Text’ multiple times during the campaign, which was called “ill-fated”, “disastrous”, and a “serious error” in Judge Tindal’s approved judgment.
Judge Tindal also said: “This is rather a legal minefield…This case may be helpful as an example of how not to do it. A wise first move will be a search whether a competitor’s brand is actually a trademark”, adding “including it [the trademarked brand] in the advert itself as opposed to as just a ‘keyword’ can backfire commercially as well as legally”.
He also added, however, that “even limiting it to a keyword may not be enough to avoid liability”, adding: “It may be wise for a small business to get advice, especially in these legally as well as commercially uncertain times, as our legal system begins in earnest to detach from the EU.”
AdvanceTrack was supported in the case by John Ward at Midlands-based Brindley Twist Tafft and James Solicitors, Barrister Nick Zweck KC from IP specialists Hogarth Chambers, and Leanne Hall from patent and trademark law experts Serjeants.
Leanne Hall said: “We would always recommend carrying out a search to check whether someone else has registered a trademark before you use it. As this case has shown, using a competitor’s mark can make you liable for trade mark infringement.
“Using a Registered Trademark in an advert that is visible in the search results is not acceptable because it creates a high likelihood that customers will confuse the two brands.”
Mr Sheth added: “Our legal team has been fantastic throughout this process, having been alongside us for around two years, and I’d like to commend their efforts to help us win this important case.”