Using Key Words – Caution!

Do you know when you can use other companies’ trade marks to trigger your own ads on search engines?

The recent decision of the High Court in the case of Victor Andrew Wilson v Yahoo! Limited[1]clarified the position in the UK on keyword advertising.  Advertisers may now use other companies’ trade marks as keywords to trigger their own advertisements on search engines.

The position in the rest of Europe is less clear.  Three cases on this issue recently came before the French appeal courts.  The first was brought by the proprietor of the trade mark EUROCHALLENGES against an advertiser using EUROCHALLENGES as a keyword.  The second was brought by the proprietor of the trade mark BOURSE DES VOLS but here the claim was against Google who had made BOURSE DES VOLS available as a keyword.  Both proprietors alleged trade mark infringement.  In the third case, the proprietor of the well-known trade mark LOUIS VUITTON brought trade mark infringement proceedings against Google for allowing sellers of counterfeit Louis Vuitton goods to use LOUIS VUITTON as a keyword.  In all three cases, the trade mark proprietors were victorious. 

The position taken by the courts in France is exactly the opposite of the approach taken by our judges in the UK.  This leaves the position worryingly unclear for businesses, particularly those wishing to advertise in multiple jurisdictions.  Because of the importance of the issue, the three French cases have been referred to the European Court of Justice (ECJ), the highest court in Europe.  The ECJ will give a definitive ruling on whether the use of third party trade marks by advertisers as keywords will be trade mark infringement.  UK judges will be bound to follow the ECJ’s ruling in future decisions.

For now, advertisers in the UK may continue to use third party trade marks as keywords and trade mark owners are powerless to stop them.  “But,” according to ACID Accredited lawyer Patricia Jones of Hammonds, “Both sides are advised to watch this space!”


[1] [2008] EWHC 361 (Ch)

Comments are closed.