The trade mark was not used by anyone other than the user who
entered the trade mark term into the search engine, ruled Mr
Justice Morgan.
Yahoo! UK and its sister company, Overture, were sued by Victor
Wilson, owner of a London-based catering business. Wilson sells
snacks at festivals under the name 'Mr Spicy', a name that he
registered as a Community Trade Mark for some food and
hospitality-related goods and services.
Wilson sued Yahoo! because he discovered that typing 'Mr Spicy'
into Yahoo!'s UK search engine triggered sponsored links for
Sainsbury's supermarket and price comparison site
PriceGrabber.co.uk. He said this infringed his trade mark
rights.
The text of the adverts made no reference to 'Mr Spicy'.
Evidence showed that both companies had sponsored the ordinary
English word 'spicy' but, contrary to Wilson's belief, neither had
sponsored the term 'Mr Spicy'.
Yahoo! acknowledged that entering the term 'Mr Spicy' could
trigger adverts for companies that sponsored the word 'spicy' due
to its word-matching technology. Wilson said that this was also
trade mark infringement.
Yahoo! asked for summary judgment, arguing that it had not
'used' Wilson's trade mark or that any use by Yahoo! did not amount
to 'trade mark use'.
Mr Justice Morgan accepted Yahoo's arguments.
"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," he wrote.
He continued: "That is enough to decide the case in the
defendants' favour. But the matter does not stop there. If, by some
process of reasoning, one were to hold that the search engine's
response to the words used by the browser was, itself, use by the
defendants, in my judgment, it is not use of the mark 'Mr Spicy'.
What, instead, is being used is the English word 'spicy' as it
appears in that phrase."
Mr Justice Morgan referred to a ruling of 2003 that discussed
the meaning of 'trade mark use' at length. It was issued in a case
brought by Arsenal Football Club against a street vendor called
Matthew Reed, over Reed's sales of unofficial Arsenal-branded
merchandise.
The court in the Arsenal case explained some limits on the
rights of a trade mark owner: "The proprietor may not prohibit the
use of a sign identical to the trade mark for goods identical to
those for which the mark is registered if that use cannot affect
his own interests as proprietor of the mark having regard to its
functions."
Mr Justice Morgan said Yahoo!'s case fitted that explanation
"very comfortably and clearly".
"Mr Wilson 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,"
he wrote.
He pointed out that the text of the adverts complained of made
no reference to Wilson's business. "There is a reference to
Sainsbury's," he wrote. "It does not say that all food sold at
Sainsbury's has Mr Wilson's trade or business as an origin. It is
not pretending that Sainsbury's food all comes from Mr Wilson's
trade or business, MR SPICY." Thus he concluded that the text of
the ads could not have an adverse impact on Wilson's trade mark
rights.
The ruling suggests that Yahoo! would not infringe Wilson's
trade mark even if Sainsbury's had sponsored the term 'Mr Spicy'.
Mr Justice Morgan wrote: "there can be no objection to Yahoo, if
this is what they want to do, to solicit from third parties the use
by those third parties, in return for payment, of a keyword 'Mr
Spicy' if they are going to attach 'Mr Spicy' to goods and services
different from those protected in Mr Wilson's case."
He did not comment on the right of Yahoo! to sell as a keyword a
trade mark that enjoys protection across a wider range of goods and
services and/or greater distinctiveness. Nor did he discuss whether
or not Sainsbury's might infringe the mark by sponsoring 'Mr Spicy'
as a term.
The ruling does imply that the text of the advert is relevant,
though Mr Justice Morgan did not discuss whether or not Yahoo!
would infringe Wilson's trade mark if the text of Sainsbury's
advert was such that users might be confused.
Dismissing Wilson's case, Mr Justice Morgan described Yahoo!'s
actions as being "a million miles away" from use of Wilson's mark
in relation to goods or services which are identical or similar to
those protected by his mark.
Wilson represented himself in court. He told the court that he
thought he could win on the basis of two French court rulings
against Google. In one of these, the hotel chain Le Meridien Hotels
and Resorts asserted control over the keyword 'meridien' (French
for the ordinary English word meridian). In the other, travel
agencies Luteciel and Viaticum asserted control over the terms
bourse des vols (flight market) and bourse des voyages (travel
market).
Yahoo! was represented by the law firm Bird & Bird and
barrister Benet Brandreth.
Bird & Bird partner Peter Brownlow said: “For a number of
years we have been waiting for a UK decision on whether or not the
use of keywords for sponsored search results amounted to trade mark
infringement. The judgment of Mr Justice Morgan has now clarified
the position as regards search engines.”
