Intellectual Property Law

Keyword advertising & trade mark infringement

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 term in the keyword adverts themselves, which were for money clips

Here, the North Californian District Court found that the defendant's usage was trade mark infringement. Whilst a good result the claimant, the ruling will slightly irritate IP lawyers because the Court did not distinguish between "up front" and "behind the scenes" use - in other words, what if the defendant had registered "SMART MONEY CLIP" as a keyword, but hadn't used the term in the actual advert?

IMPACT comment

These are not the only recent trade mark rulings to do with keyword adverts. Earlier this month, we reported that the German Courts had ruled that "using a competitor company's name as a search engine keyword (e.g. Google's AdWords service) is lawful provided it's clear that the advert in question is for the advertiser's own products/services, not those of the competitor."

Put together, the 3 rulings indicate that keyword advertisers should steer clear of using the trade marks of competitors as part of their adverts. The UK and German rulings also suggest that advertisers targetting those jurisdictions can use competitor trade marks "behind the scenes", as keywords, without fear of a successful trade mark infringement claim.

This post isn't intended to be a comprehensive summing up of trade mark law on keyword advertising; if you have written one or know of one then please let us know and we'll post a link. Have a good week!

Full post as published by IMPACT on March 31, 2008 (boomark / email).