In a decision favourable to search engines, the English High Court has announced the first UK judgment on whether the use of keywords to generate sponsored search results amounts to trade mark infringement. The court dismissed the claim of infringement and granted summary judgment to the search engine defendants.
In Wilson v Yahoo! UK Ltd and Overture Services Ltd  EWHC 361 (Ch) Morgan J. held that when the second defendant, Overture, 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 claim was brought by a 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. He complained that sponsored links to third parties’ websites appeared when a user typed “MR SPICY” into Yahoo!’s search engine. He argued that this resulted in infringement of his trade mark by the defendants. The claimant represented himself and appeared in person.
The Yahoo! companies 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 argued this was also trade mark infringement.
The Yahoo! companies applied for summary judgment or for the claim to be struck out on the basis that they had not used the trade mark or that any use by them did not amount to “trade mark use”.
In his decision granting summary judgment to the defendants and striking the claim out Morgan J. 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 decision in Arsenal Football Club plc v Reed (C-206/01). Nothing in the advertisements which were coming up could have any adverse impact on the Claimant’s rights as proprietor of the mark. The Claimant was not able to prohibit use of the words “MR SPICY” if that use could not affect his own interest as proprietor of the mark having regard to its functions.
As the first UK decision on whether or not the use of keywords to generate sponsored search results amounts to trade mark infringement, this judgment will be welcomed by search engine operators whose position under English law in relation to sponsored search services has been uncertain until now.
Note: Yahoo! UK Ltd and Overture Services Ltd were represented by Bird & Bird.