Recently Google announced it had revised its Trademarks Adwords Policy in respect of the UK and Ireland. It would no longer investigate complaints by trade mark owners relating to the selection of their marks by third parties as keywords in connection with keyword-triggered online advertising (in the form of paid for search results (so called ‘sponsored listings’). In making this announcement, Google may have been reassured by a recent UK High Court judgment in favour of competing search engine Yahoo relating to this issue.
On 20 February 2008 the High Court in Victor Andrew Wilson v Yahooo! UK Limited and Overture Services Limited considered the potential liability of search engines (such as Google and Yahoo) for trade mark infringement arising from the way they use their search engine technology to trigger Web site listings in response to a search term (a keyword) corresponding to a third party trade mark. This Community Trade Mark infringement action in respect of the mark Mr. Spicy (for food and spice related goods and services) was unsuccessful on its facts. However it is unlikely to be the last word the UK courts have to say on this controversial issue. Not least because the courts of those Member States of the EU who have been asked to determine this issue have reached different conclusions.
Background To The Yahoo Judgment
If an Internet user puts a word or combination of words (‘a search query’ or, in search engine terminology, a ‘keyword’) into a search engine search box then, in the ordinary way, the response which will be provided to the keyword search will involve two Web site listings. The first list produces ‘natural’ results, ie Web site listings which are likely to contain content which is relevant to the search query/keyword that has been typed into the search box by the Internet user. The second list produces ‘sponsored results’ ie Web sites which have agreed to pay the search engine company to appear in the sponsored results listings that appear in response to browsers inputting a particular keyword, combinations of keywords, or variant keywords into their search box. The Web sites displayed in sponsored listings may not have any connection at all with the trade mark owner, or its goods or services. The selection of the keyword or something related to it in the search query, in combination with the search engine technology, has led to the advertiser’s details appearing in the sponsored results list.
Mr. Wilson provided evidence that when ‘Mr Spicy’ was used as a search term for example in the Yahoo search engine Sainsburys Web site appeared in the sponsored results list. He claimed that this infringed his Community Trade Mark under article 9(1)(a) of the CTM Regulation – (identical marks/identical goods infringement). However Yahoo led evidence, which was accepted by the court, that no-one had bid on or obtained ‘Mr Spicy’ as a keyword, although they had bid on the word ‘spicy’. This factual finding was enough to dismiss Mr. Wilson’s claim as it stood because ‘The trade mark in this case is not used by anyone other than the browser who enters the phrase ‘Mr. Spicy’ as a search query in the defendants’ search engine. In particular, the trade mark is not used by the defendants. The response of the defendants to the use of the trade mark by the browser is not use of the trade mark by the defendants’ (emphasis added).
Similarly Mr. Wilson’s application to amend his claim to include article 9(1)(b) and 9(1)(c) infringement in addition to the originally claimed 9(1)(a) infringement was refused. This was on the basis that ‘the defendants are not using the trade mark Mr. Spicy or anything similar to it’ (our emphasis). Both the new claims required use of a ‘similar’ mark.
Finally the judge held that the search engine companies were not using ‘Mr Spicy’ or indeed ‘spicy’ as a trade mark at all (ie for the purposes of distinguishing their own good or services) with the result that such use could not therefore affect the claimant’s interests as proprietor of the mark having regard to the essential function.
Comment
The judge’s finding that if Yahoo could be seen to be using the trade mark (or similar mark) in the course of trade at all, then it was not using it in respect of similar goods is not surprising. Yahoo do not market food rather they sell a new type of ‘advertising space’. In the judge’s words – ‘Mr. Wilson’s trade mark is not a mark which entitles him to stop people using the words ‘Mr Spicy’ but it is a trade mark in relation to certain goods or services. … What Yahoo are saying is they are offering services of their own which are of a radically different character and they are saying to the public generally, who see this screen on conducting a search, that the public generally can place any advertisement for anything the public likes on the Yahoo page and that advertisement will come up and it will come up in particular when the words ‘Mr Spicy’ are put in. But that does not appear to me to be even arguably an infringement of anything in Article 9’.
There was no remaining claim against Sainsburys and no claim was asserted that Yahoo was vicariously liable in some way for the use of the mark (or similar mark) by this advertiser for food products (identical or similar to those for which the mark was registered). Accordingly the issues such claims may have involved did not come to be expressly considered.
However perhaps most interesting is the judge’s general finding that Yahoo were not using Spicy or Mr Spicy as a trade mark at all and therefore could not infringe; ‘if I were to hold that the defendants were using [the claimant’s] trade mark in doing what they did, then they are not using it as a trade mark as explained in the Arsenal Football Club case…[the claimant] is not able to prohibit the use of the words ‘Mr. Spicy’ even when they are being applied to goods identical to those for which the mark is registered if that use cannot affect his own interest as proprietor of the mark having regard to its functions’ (emphasis added).
In view of the above finding it is difficult to see how an advertiser who merely bids on a keyword which is identical or similar to a trade marked word can also ever be liable (at least in the UK courts) for trade mark infringement in the absence of any infringing content on the advertiser’s Web site or advertising text. It appears from the judgment in this case that the appearance of the Web site on a sponsored listing could not by itself be regarded as use of the trade mark corresponding to the keyword because no message about trade origin arises from the context of this use.
It is possible that these more general findings re-assured Google when it stated as follows – ‘Google has made a policy revision that applies to complaints we receive regarding trademarks in the UK and Ireland. For complaints received on or after Friday, April 4, 2008, we will no longer review a term corresponding to the trademarked term as a keyword trigger. However, we will continue to perform a limited courtesy investigation of complaints regarding ad text purported to be in violation of a trademark… Beginning May 5, 2008, keywords that were disabled as a result of a trademark investigation will no longer be restricted in the UK and Ireland… Google’s revised trademark policy applies to trademarks held in the UK and Ireland. We will continue to handle trademark complaints for all other countries pursuant to the existing trademark policy’. Further details of Goggle’s announcement can be obtained from the support section of www.adwords.google.com.
The restriction of the change in policy to the UK and Ireland is interesting as the courts in France, for example, appear to have taken a different approach to the UK and Germany as search engines in France have lost several cases relating to the use of trade marks in keyword triggered advertising. As trade mark law is supposed to be harmonized throughout the EU this is unsatisfactory.
In view of the factual findings in Mr Wilson’s case and given that he represented himself throughout; this judgment is unlikely to be appealed. We expect that a similar case will however arise in the near future and may well result in a reference to the European Court of Justice.
Bonita Trimmer is a senior associate and professional support lawyer to the Intellectual Property team at Wragge & Co LLP. She specialises primarily in brand disputes but has over 10 years’ experience in advising on issues concerning all areas of ‘soft’ IP law.
