Keyword advertising & trade mark infringement

IMPACT®:

This is a quick heads-up on two recent trade mark infringement judgments, both to do with the use of a third party’s trade mark in a keyword advert. Keyword adverts are the sponsored links that sit alongside ordinary search results on search engines such as Google and Yahoo!

UK case: Victor Wilson v Yahoo (”Mr Spicy”)

The first is a UK High Court ruling in Victor Wilson v Yahoo!, discussed earlier this month by the IPKat. The claimant owned a Community Trade Mark for “MR SPICY”, registered for food and drink. When users searched against this phrase on Yahoo!, adverts for Sainsburys and Pricegrabber appeared. This happened because those third parties had chosen to use the word “spicy” as one of their keywords.

The High Court ruled that the use of “spicy” as a keyword did not infringe the “MR SPICY” trade mark. The Court held that the only use of the mark was by users of the search engine. In addition, the Court ruled that use of “MR SPICY” as a keyword would not have been trade mark infringement because this was not “trade mark use”.

This ruling clarifies the UK law position on the use of trade marks as key words. However, it does not address the use of trade marks within keyword adverts themselves. The position on the latter point is made clear by Article 9(2) of the Community Trade Mark Regulations which expressly lists “using the sign… in advertising” as something that can constitute trade mark infringement.

US case: “Smart Money Clip”

Out-law.com provides a report on this case (link above). The key facts are as follows:

  • The claimant (plaintiff in US legal terminology) had registered the trade mark “SMART MONEY CLIP” for money clips
  • The defendant registered the term “SMART MONEY CLIP” as a Google keyword
  • The defendant featured this…

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Published:
17.05.08
Category:
IP News