Victor Wilson, who represented himself in the case before the High Court, ran a mobile catering business selling Afro-Caribbean and Halal food. He owned a CTM for Mr Spicy, registered in respect of food, sauces and spices and provision of food and drink.
Wilson sued Yahoo! UK and its sister company, Overture Services, claiming that when people typed the term “Mr Spicy” into Yahoo’s search engine, sponsored links to third parties’ websites appeared. He argued that this amounted to infringement of his trade mark.
The defendants countered that advertisers whose sponsored links appeared had not bought the term “Mr Spicy” as a keyword. Instead, sponsored links appeared as a result of the use of matching technology which responded to the input of “Mr Spicy” by displaying links to advertisers who had bid on related keywords, such as “spicy”. Wilson claimed this also constituted trade mark infringement.
In his February 20 decision, Mr Justice Morgan held that, since the trade mark had been used only by third parties, i.e. members of the public who type keywords into search engines, the defendants were merely responding to third party use, which does not amount to trade mark infringement. The judge said that this would be the case even if advertisers had bid on the keyword “Mr Spicy”.
He went on to say that even if there was direct use by the defendants, it was use of the English word “spicy” and not the term “Mr Spicy”:
“The argument continues by explaining that if one types ‘Mr. Spicy’ into the search query box and if that produces sponsored results, in this case Sainsbury’s and Pricegrabber, that is not because the phrase is ‘Mr. Spicy’. It is because of the presence in that phrase of the ordinary English word ‘spicy’ which was bid for or was associated with words bid for by the sponsors. So it was not ‘Mr. Spicy’ that produced the sponsored result. It was the word ‘spicy’ in the phrase which produced the sponsored result.”
Finally, he said that even if the defendants had directly used “Mr Spicy”, it did not represent use “as a trade mark”, following the ECJ case in Arsenal Football Club plc v Reed.
“For a number of years we have been waiting for a UK decision on whether or not the use of keywords for sponsored search results amounted to trade mark infringement,” said Peter Brownlow, who led a Bird & Bird team that advised the defendants. “The judgment of Mr Justice Morgan has now clarified the position as regards search engines.”
The judge awarded the defendants summary judgement. Wilson did not seek permission to appeal.
Yahoo! UK and Overture were represented in the High Court by barrister Benet Brandreth. Yahoo! UK’s in-house legal team was led by general counsel Simon Citron.
