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Print articleYahoo Victorious in Heated Trademark Dispute
May, 2008 -
Until recently there was a significant amount of confusion and uncertainty on whether or not it is trade mark infringement for a search engine to allow certain 'keywords' to be sponsored by a third party who is not the trademark owner.
The above scenario was encountered in the recent case ofWilson
Under the sponsorship scheme adopted by Yahoo, companies are permitted to sponsor various words or terms. In this case, Sainsbury's had sponsored the word 'spicy' and due to the searching mechanism, a search for 'Mr Spicy' also triggered the same sponsored results as if the browser had simply searched for 'spicy'. As a result, Mr Wilson claimed that this constituted 'use' of his trade mark by Yahoo and hence, an infringement of his trade mark rights.
However, the court disregarded Mr Wilson's arguments, stating that the only person who 'uses' the trademark is the Internet user and, hence, Mr Wilson could not expect the court to rule that Yahoo played any part in such 'use'. Instead Yahoo had only responded to the 'use' by the search engine user. In further attack to Mr Wilson's argument, the judge in the case also held that even if it was possible to attach some form of 'use' to Yahoo's sponsorship of words, what they would have 'used' is the generic word 'spicy' and not the words 'Mr Spicy'.
Both trade mark lawyers and trade mark owners have largely welcomed the decision for the clarity which it has brought to this previously confusing and inconsistent area of trade mark law. For several years there has been an increasing debate on whether sponsored search results amounted to a trade mark infringement. At least this latest decision appears to put such debate to rest for the time being.
Link to article
The above scenario was encountered in the recent case of
Under the sponsorship scheme adopted by Yahoo, companies are permitted to sponsor various words or terms. In this case, Sainsbury's had sponsored the word 'spicy' and due to the searching mechanism, a search for 'Mr Spicy' also triggered the same sponsored results as if the browser had simply searched for 'spicy'. As a result, Mr Wilson claimed that this constituted 'use' of his trade mark by Yahoo and hence, an infringement of his trade mark rights.
However, the court disregarded Mr Wilson's arguments, stating that the only person who 'uses' the trademark is the Internet user and, hence, Mr Wilson could not expect the court to rule that Yahoo played any part in such 'use'. Instead Yahoo had only responded to the 'use' by the search engine user. In further attack to Mr Wilson's argument, the judge in the case also held that even if it was possible to attach some form of 'use' to Yahoo's sponsorship of words, what they would have 'used' is the generic word 'spicy' and not the words 'Mr Spicy'.
Both trade mark lawyers and trade mark owners have largely welcomed the decision for the clarity which it has brought to this previously confusing and inconsistent area of trade mark law. For several years there has been an increasing debate on whether sponsored search results amounted to a trade mark infringement. At least this latest decision appears to put such debate to rest for the time being.
Link to article
