Advantage Computers has won its legal battle against Advantage Group over the use of its trademarked name.
Advantage Computers has been trading under that name since 1986, filing its trademark application in 1992. Advantage Group grew out of a conglomeration of companies and used the name Advantage Group from 1994 onward, although the judge in the case, Judge Chambers, ruled that Advantage Group did not compete directly with Advantage Computers until later.
"That situation did not come about until 1999 when Advantage Group changed commercial direction," writes Chambers in his ruling.
"It was at that point that Advantage Group and its newly acquired businesses (which were turned into subsidiaries) made a decision to persist with using Advantage as a mark, even though they knew of Advantage Computers' trademarks and the areas of protection."
Advantage Group lawyers had argued that it had been operating in the IT space before 1999, but the judge declined to accept this. Bruce Simpson, editor of online IT news site Aardvark, was called as a expert witness by Advantage Computers on this point.
"He defined firmware as ‘software generally used in computer equipment or electronic equipment designed to perform one specific role'. He drew a distinction between computerised devices and computers. A computer was ‘a general purpose computing device which through the addition or alteration of software can be made to do a large number of different tasks'. A computerised device, on the other hand, was ‘a single function device which uses computer technology to assist it in performing that one role'," writes the judge, who used the Yellow Pages advertisements of the time to show that Advantage Group did not consider itself a computer hardware, software or services company at that stage as it did not advertise itself in these pages.
The judge also ruled that Advantage Computers had been offering web development services since 1997 while Advantage Group did not begin offering such services until late 1999 after it had acquired two web development companies: Glazier Systems and Webmasters.
Advantage Group's claim that Advantage Computers was "passing [itself] off" by using the Advantage name was also dismissed.
Although Advantage Computers has won the right to use its name, the judge said Advantage Group would not have to change its name. Advantage Computers simply wants it to stop using the "trademark Advantage for the goods and services covered by its registered trademarks".
Advantage Computers is also seeking damages or an "account of profits" from Advantage Group - the judge has yet to rule on that issue.