A United Kingdom trial court specializing in intellectual property matters ruled late last month that Yahoo! UK's keyword advertising service did not make a trademark use of the plaintiff's MR. SPICY community trademark when it displayed sponsored ads triggered by searches on the term "spicy."
There was no evidence in the record that Yahoo! UK had sold MR. SPICY as a search keyword. Instead, a pair of businesses (Pricegrabber.com Ltd. and Sainsbury's Supermarket Ltd.) had purchased the term "spicy" as a trigger for their advertisements. Thus, if a Web user searched on the plaintiff's trademark, the Yahoo! search engine would return advertisements tied to the term "spicy."
The court here held that what Yahoo! UK was doing was not an actionable use of the plaintiff's mark. "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," Justice Morgan wrote. "In particular, the trade mark is not used by the defendants."
Moreover, the court said, assuming that a trademark use occurred here, such use did not create confusion as to the origin of the advertised goods.
Given that the trademark-use issue has badly divided courts here in the United States, I was surprised how little patience the court had for the plaintiff's claims:
What in fact Mr. Wilson complains about is that if one chooses the words "Mr. Spicy" as a search query and enters them in the Yahoo search engine, one will get certain results. And on the page which appears on the screen on that occasion Yahoo will speak to the viewer and will say to the viewer, “You can advertise yourself here” so that if another person uses the words “Mr. Spicy” that person will see your advertisement for your goods and services.
Secondly, what the viewer sees is that Yahoo will offer other services and will advertise other features of its services when the page appears on the screen. In other words, what Yahoo is doing when the browser puts in "Mr. Spicy" is exactly the same as what Yahoo is doing when the browser puts in the word “spicy” or indeed any other word or term or phrase which the browser chooses to use.
It seems to me that this is a million miles away from Yahoo using Mr. Wilson’s mark in relation to goods or services which are identical to those protected by the mark or which are similar to those protected by the mark. What Yahoo are saying is they are offering services of their own which are of a radically different character and they are saying to the public generally, who see this screen on conducting a search, that the public generally can place any advertisement for anything the public likes on the Yahoo page and that advertisement will come up and it will come up in particular when the words "Mr. Spicy" are put in. But that does not appear to me to be even arguably an infringement of anything in Article 9.
The plaintiff was not represented by counsel, and he was in any event the operator of what appears to be a small business. It doesn't seem likely this ruling will be appealed, at least not effectively.
Thank you to the Bird & Bird attorney who provided me with a transcript of the court's ruling. Bird & Bird represented Yahoo! UK in the matter. The case is Wilson v. Yahoo! UK Ltd., No. 1HC 710/07, decided Feb. 20, 2008.
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