April 2008
Spice on the Internet - sponsored links did not amount to trade mark infringement
On 20 February 2008 the High Court decided that the internet company Yahoo did not infringe the community trademark ‘Mr Spicy’, held by a Mr Wilson, when sponsored links to websites of other parties appeared when the term was entered into a Yahoo search.
The definition of a trademark in the Trade Marks Act 1994, is a sign, capable of being represented graphically, which distinguishes particular goods or services from one undertaking from those of another undertaking. In order to register a keyword as a mark, it must be capable of being distinguished in this way. Mr Wilson had registered his mark in the categories of food, sauces, spices and the provision of food and drink.
Yahoo argued that the advertisers, whose links appeared in a search, had not purchased ‘Mr Spicy’ as a keyword, instead the sponsored links had appeared due to technology that matched the word ‘Spicy’, which had generated the website matches when a user entered ‘Mr Spicy’. The links appeared as certain advertisers had bid on the word ‘Spicy’, but not ‘Mr Spicy’. Mr Wilson had claimed this was trademark infringement. Yahoo applied for Summary Judgment stating that they had not used the trademark and in any event it was not trade mark use in a trade mark sense.
In order for there to be trademark infringement, the infringing mark must have been used ‘in the course of trade’, and be either an ‘identical sign on identical or similar goods or services’, a ‘similar sign on identical or similar goods or services’, or ‘similar to a mark of repute for dissimilar goods or services’. The public must be likely to be confused as to the origin of the goods or services.
In the case of Arsenal Football Club plc v Reed (C-206/01) decided in 2002, a stall holder had claimed that using the Arsenal trade mark on his merchandise had been an indication of support rather than a guarantee of trade origin, i.e. that it falsely indicated that it came from or was associated with Arsenal football club. The European Court of Justice decided however that such use would amount to infringement when it would or might affect the function of the trade mark, in particular the guarantee of trade origin function, and held that such use was an infringement of Arsenal’s trade mark.
In the recent case, Mr Justice Morgan in the High Court decided that the trade mark was not being used by anyone other than the person typing ‘Mr Spicy’ into Yahoo’s search engine, and that Mr Wilson had only responded to the users’ use of the website and as such not the use of the word by Yahoo. Furthermore, it was held that even where there was use by Yahoo, this was only in relation to the word ‘Spicy’ and not ‘Mr Spicy’.
Finally, Justice Morgan held that even where there was use of the word ‘Mr Spicy’ by Yahoo, such use was not use in a trade mark sense, as applicable in the Arsenal case above. The Judge decided the application was ‘totally without merit’, and Yahoo!'s actions as being "a million miles away" from Mr Wilson's mark in relation to goods or services which are identical or similar to those that were protected by his mark.
Briffa Comment:
This case has helpfully clarified the law surrounding whether the use of keywords in sponsored search results amounts to trade mark infringement. The position regarding search engines is now clear.
Had Mr Wilson registered his mark within the provision of goods and services over the internet, the result in this case may well have been different. There had however been no use by Yahoo itself of the mark, only by users; at most, there had been use by Yahoo of the term ‘Spicy’, and in any case this had not been used in a trade mark sense by Yahoo. As such, there could be no trade mark infringement.
In order to protect its mark more fully, Mr Wilson could have been advised to register the mark in all relevant classes of goods and services.