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Tuesday, 4 March 2008

In search of Mr Spicy

The attention of the IPKat has just been drawn to this press release from Bird & Bird, headed "Landmark case clarifies law on keywords and sponsored search results".

Right: well, he DID marry a Spice Girl ...

The release reads, in relevant part:

"International law firm Bird & Bird together with Yahoo!'s In-house legal team successfully defended Yahoo! UK Ltd and its sister company ... in a groundbreaking trade mark infringement case concerning keywords and sponsored search results. The English High Court decision handed down on 20 February 2008 determined that when Yahoo! Search Marketing matched search terms entered by users to keywords bid on by advertisers in order to display sponsored links, there was no use of a trade mark by the defendants for the purposes of infringement.

The case was brought by Mr Wilson, proprietor of a Community trade mark for the words MR SPICY, registered in respect of food, sauces and spices and provision of food and drink. Mr Wilson complained that sponsored links to third parties' websites appeared when a user typed "MR SPICY" into Yahoo!'s search engine - arguing infringement of his trade mark by the defendants.

... Yahoo! ... argued that advertisers whose sponsored links appeared had not purchased MR SPICY as a keyword. Instead, sponsored links appeared due to matching technology which responded to the input of MR SPICY by displaying sponsored links to advertisers who had bid on related keywords, such as "spicy". Mr Wilson claimed this was also trade mark infringement.

... Yahoo! ... applied for summary judgment or for the claim to be struck out on the basis that they have not used the trade mark or that any use by them did not amount to "trade mark use".

In his decision Mr Justice Morgan held:

* The trade mark was not used by anyone other than the user who entered the words "MR SPICY" into the search engine.

* The defendants had only responded to the use by the user and this did not amount to use of the trade mark by the defendants. The judge held this would even be the case if advertisers had bid on the keyword "MR SPICY".

* Even if there was use by the defendants, it was use of the English word "spicy" and not "MR SPICY".

* Even if there was use of "MR SPICY" by the defendants, such use was not use "as a trade mark" following the ECJ case in Arsenal Football Club plc v Reed (C-206/01).

The claimant did not seek permission to appeal from the judge ...".

The IPKat wonders why this decision has been kept so quiet for a fortnight and hopes that it will soon be put on BAILII, where we can all look at it and read it carefully. He'd love to know what it says about the decision of the Court of Appeal in Reed v Reed. He also notes that the Mr Spicy case hasn't so far shown up on Google or even Yahoo! news searches. Merpel says, but what if the trade mark proprietor also registers his mark in respect of the service of providing results through the use of search terms on the internet?

6 comments:

Jack McVooty said...

The position that "keyword use" is not trademark use seems artificial, and avoids the issue of whether users are being misled or being given useful information.

Ann Critchell-Ward said...

Mr Wilson issued proceedings against pricegrabber.com last year for infringement of the same mark by the same means and we successfully sent him away with a flea in his ear. I have doubts that this will be the end of Mr Spicy's litigious career.

Matthias said...

What a coincidence. A similar decision was published in Germany today (OLG Frankfurt/M. , 6 W 17/08, dated 26.2.2008), but the Higher Regional Court distinguishes between keyword booking of search results and keyword booking in a distinct "sponsored links" category which does not appear among the search result. While Keywords (Google AdWords) were considered as trademark use rather broadly by some courts (OLG Braunschweig, OLG Dresden, OLG Stuttgart, applying last year's ruling of the German Federal Court of Justice on Metatags to AdWords), the OLG Frankfurt differentiates and argues that the essential function is not affected by advertisments which appear in a distinct area on the screen, because Internet users will be aware that this does not indicate any kind of commercial connection.

(http://web2.justiz.hessen.de/migration/rechtsp.nsf/E5D8C35C8D034A27C1257402003482C6/$file/06w01708.pdf)
(unfortunately in German)

Bengani said...

In my opinion, the High Court would have decided differently, if the bone of contention in the litigation, was use of the mark "Mr. Spicy" instead of just the generic word "spicy".

Craig said...

A link to the decision: http://www.law-now.com/cmck/pdfs/nonsecured/yahooukmar08.pdf

Anonymous said...

With regard to Ann's comment "I have doubts that this will be the end of Mr Spicy's litigious career".

Have a look at CTM APP NUM 006741458, filed 11th March (3 weeks after the hearing). In particular the Goods and Services in Class 42.

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