‘Spice’ man fails in trademark bid | 19 August 08

SEARCH engine giant Yahoo! has fought off a “groundbreaking” trademark infringement case over keywords and sponsored search results.

Experts at North law firm Ward Hadaway say the ruling in the case of Wilson (Victor Andrew) v (1) Yahoo! Uk ltd (2) Overture Services Ltd brings welcome clarity to companies who use search engine marketing.

In the case, mobile catering businessman Victor Wilson took Yahoo! and its sister company Overture Services Ltd (which trades as Yahoo! Search Marketing) to the High Court, alleging infringement of a trademark he owned, ‘Mr Spicy’.

Mr Wilson claimed that when people typed in ‘Mr Spicy’ into Yahoo’s search engine, sponsored links to other companies’ websites appeared. He argued that this was an infringement of his trademark.

In its defence, Yahoo! said that advertisers whose sponsored links appeared had not bought the term ‘Mr Spicy’ as a keyword.

The company said that the reason these sponsored links appeared was that its word matching technology displayed links to advertisers who had bid on related keywords such as ‘spicy’. Mr Wilson claimed this was also trademark infringement.

The High Court said that Yahoo! was not using the trademarks and therefore not infringing the claimant’s trademark.

In his decision Mr Justice Morgan said the trademark was not used by anyone other than the users who entered the words ‘Mr Spicy’ into the search engine.

Yahoo! had only responded to the use by the user and this did not amount to use of the trademark by the defendants.

The judge added that even if there was use by Yahoo!, it was use of the English word ‘spicy’ and not ‘Mr Spicy’. Even if Yahoo! had used ‘Mr Spicy’, this did not represent use as a trademark, following a ruling in a case involving Arsenal FC.

Mr Wilson could not stop the use of the words ‘Mr Spicy’, even when they were being applied to goods identical to those for which his mark was registered, if that use could not affect his own interest as owner of the mark. That was the case here.

The judge said he could not begin to see how a reference to Sainsbury’s in the search results had any adverse impact on Mr Wilson’s rights.

Judy Baker, IT partner at Ward Hadaway, said: “This is believed to be the first case in the UK brought against a search-engine operator in relation to keyword and sponsored link services, and will be welcomed by advertisers insofar as the court held that the only use of the mark was made by the entering the search term into the browser.

“However, the case did not address all the issues surrounding search engine advertising so companies are still warned to be cautious and avoid use of their competitors’ trademarks in keyword advertising.

“As a footnote, the top ranked web entries for the search term ‘Mr Spicy’ now almost all relate to this court case!”