Case law: registered trade mark not infringed by sponsored online search results - 06/06/2008

In a recent High Court case, the owner of a Community Trade Mark for 'Mr Spicy' brought an action against a search engine, Yahoo!, alleging that it had infringed his trade mark by selling to another company a sponsored link that appeared when the results of a Yahoo! search for 'Mr Spicy' were displayed.

The court found that the trade mark was not 'used' by anyone other than the person performing the online search, and particularly not by the company providing the search engine. Even if it could be said that the response of the search engine to the search constituted 'use' of the trade mark, it would not have been use of the trade mark 'Mr Spicy' but simply of the English word 'spicy'.

While this case did not consider directly any possible infringement of the trade mark by the company that had bought the sponsored link, trade mark owners would be unlikely to win any such infringement action. The best way for a trade mark holder to avoid the situation that arose in this case is to buy the sponsored link himself.

Recommendations

Consider buying sponsored links for your brand names, and confusingly similaw names.

Related Resources

in the Muckle LLP Resource Centre

• ICO guidance on managing a data security breach
• Owners must act faster as trade mark registration opposition procedures change
• Using other people's trade marks in 'gripe' sites
• European case shows that research using a third party database can infringe their 'database right'