YAHOO FIGHTS BACK ON ALLEGED TRADE MARKS USE

Sarah Birkbeck 

SARAH BIRKBECK – DMH STALLARD

Sarah Birkbeck of DMH Stallard reviews the latest case between Victor Andrew Wilson -v- (1) Yahoo! UK Ltd and (2) Overture Services Ltd [2008] EWHC 361 (Ch) The case provides some helpful clarification on the limits of the rights of a trademark owner and whether the use of keywords in online search engines for sponsored search results amounts to trademark infringement. Mr Wilson (W), owner of the “MR SPICY” Community trade mark, complained that sponsored links to a well-known supermarket and a price comparison website appeared whenever a user typed “MR SPICY” into Yahoo!’s UK search engine. W argued that by doing this Yahoo! had infringed his trademark rights. Yahoo! argued that the sponsored links appeared due to matching technology which responded to the input of the words “MR SPICY”. The advertisers whose sponsored links appeared had not purchased “MR SPICY” as a keyword but had bid on related keywords, such as “spicy”.  Yahoo admitted that entering the term “MR SPICY” could trigger adverts for companies that had sponsored the word “spicy” but argued that they had not “used” W’s trademark and that any use by Yahoo! did not amount to “trademark use”. In his decision Mr Justice Morgan held that: 1.     The trade mark was not used by anyone other than the user who entered the words “MR SPICY” into the search engine;2.     Yahoo! had only responded to the use by the user and this did not amount to use of the trade mark by Yahoo!. It was held this would even be the case if advertisers had bid on the keyword “MR SPICY”;3.     Even if there was use by Yahoo!, it was use of the English word “spicy” and not “MR SPICY”; and 4.     Even if there was use of “MR SPICY” by Yahoo!, such use was not use “as a trade mark” following the ECJ case in Arsenal Football Club plc v Reed whereby the proprietor of [a trademark] cannot prohibit the use of a sign identical to his trade mark if that use does not affect his own interests as owner of the trademark.  Summary judgement was given in favour of Yahoo! and Andrew Wilson did not appeal the decision.

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