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AdWords Lawsuits in the U.K.

 

Reed Executive v. Reed Business Information Limited (2004)

In 1986 Reed Employment registered the trade mark "Reed" for employment services. Reed Business Information had paid the search-engine company Yahoo for a banner advertisement for its website totaljobs.com to appear when a search was conducted under the term "reed". Overturning the High Court, the Court of Appeal  ruled that the public would not be confused by the banner advert into thinking that totaljobs was connected to Reed Employment:  "The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results results with much rubbish thrown in. The idea that a search under the name Reed would make anyone think there was a trade connection between a totaljobs banner making no reference to the word 'Reed' and Reed Employment is fanciful. No likelihood of confusion was established."

The court also adressed meta-tags. See the full text of the decision!

 

Victor Andrew Wilson v. Yahoo! UK Ltd. / Overture Services Ltd. (2008)

Google changes its trade mark policy in the UK and in Ireland: The use of trade marked terms to trigger ads will be allowed, starting May 5. This move brings the policy in line with the one in the US and Canada.

Google might have announced the change because of a recent High Court Ruling that cleared Yahoo of trademark infringement. Victor Wilson, owner of a London based catering business had sued Yahoo, after discovering that typing Mr Spicy, a name that he registered as a Community Trade Mark, triggered sponsored links for Sainsbury's supermarket. Yahoo asked for summary judgement, arguing that it had not used plaintiff's trademark, and got it:

"The trade mark in this case is not used by anyone other than the browser who enters the phrase "Mr Spicy" as a search query in the defendants' search engine. In particular, the trade mark is not used by the defendants. The response of the defendants to the use of the trade mark by the browser is not use of the trade mark by the defendants.

That is enough to decide the case in the defendants' favour. But the matter does not stop there. If, by some process of reasoning, one were to hold that the search engine's response to the words used by the browser was, itself, use by the defendants, in my judgment, it is not use of the mark "Mr Spicy". What, instead, is being used is the English word "spicy" as it appears in that phrase."

But please note: The advertiser had used the word "spicy" as keyword, not "Mr Spicy", so its still possible that buying a keyword that matches another firm's trade mark is unlawful in the UK.

Google's decision might be a dangerous one that leads to more lawsuits.

Also see:

Victor Andrew Wilson v. Yahoo! UK Ltd. / Overture Services Ltd., Decision of February 20, 2008

 

Interflora v. Marks & Spencer

Interflora launched proceedings against M&S in December 2008 to stop M&S bidding on its protected 'INTERFLORA' trade mark as an AdWord on the Google search engine. The High Court in London  has decided to refer certain questions to the European Court of Justice for determination. In his judgment, Mr Justice Arnold comments that Google's decision to operate a different policy in the UK and Ireland to that in the rest of Europe is "fairly remarkable given that the relevant law is, or should be, essentially the same throughout Europe.

For more information see Outlaw, ECJ rulings on Google keywords might not resolve controversy, warns High Court

The Interflora/M&S ruling

 

Questions referred
Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator's sponsored link service, (ii) nominates the sign as a keyword, (iii) associates the sign with the URL of its website, (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the competitor within the meaning of Article 5(l)(a) of First Council Directive 89/104/EEC1 of 21 December 1988 ("the Trade Marks Directive") and Article 9(l)(a) of Council Regulation 40/942 of 20 December 1993 on the Community trade mark ("the CTM Regulation")?
Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?
 
Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?
 
Does it make any difference to the answer to question 3 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trade marks as keywords by other parties?

 

Where the search engine operator (i) presents a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with a registered trade mark to a user within search bars located at the top and bottom of search pages that contain a sponsored link to the website of the competitor referred to in question 1 above, (ii) presents the sign to the user within the summary of the search results, (iii) presents the sign to the user by way of an alternative suggestion when the user has entered a similar sign in the search engine, (iv) presents a search results page to the user containing the competitor's sponsored link in response to the entering by the user of the sign and (v) adopts the user's use of the sign by presenting the user with search results pages containing the competitor's sponsored link, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the search engine operator within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

 

Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

 

Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?

 

Does it make any difference to the answer to question 7 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State to block the selection of signs identical to their trade marks as keywords by other parties?

 

If any such use does fall within the scope of either or both of Article 5(l)(a) of the Trade Marks Directive/Article 9(l)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(l)(c) of the CTM Regulation:
(a) does such use consist of or include "the transmission in a communication network of information provided by a receipt of the service", and if so does the search engine operator "select or modify the information", within the meaning of Article 12(1) of European Parliament and Council Directive 2000/31/EC3 of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ("the E-commerce Directive")?

 

(b) does such use consist of or include "the automatic, intermediate and temporary storage of information, performed for the sole purpose of making more efficient the information's onward transmission to other recipients of the service upon their request" within the meaning of Article 13(1) of the E-commerce Directive?
(c) does such use consist of or include "the storage of information provided by a recipient of the service" within the meaning of Article 14(1) of the E-commerce Directive?
(d) if the use does not consist exclusively of activities falling within the scope of one or more of Article 12(1), 13(1) and 14(1) of the E-Commerce Directive, but includes such activities, is the search engine operator exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

 

If the answer to question 9 above is that the use does not consist exclusively of activities falling within the scope of one or more of Articles 12-14 of the Ecommerce Directive, may the competitor be held jointly liable for the acts of infringement of the search engine operator by virtue of national law on accessory liability?

____________

1 - First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks OJ L 40, p. 1

2 - OJ L 11, p. 1

3 - OJ L 178, p. 1

 

 

Overview

Introduction

Lawsuits in France

Lawsuits in the USA

Lawsuits in Germany

Lawsuits in the Netherlands

Lawsuits in the U.K.

Lawsuits in Australia

 

Search Engine Law Overview

 

 

Latest News - Update 71

Legal trouble for YouTube in Germany

Germany: Employer may google job applicant

EU: Consultation on the E-Commerce-Directive

WIPO Paper on tradmarks and the internet

The ECJ and the AdWords Cases

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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