Back in March we prepared a bulletin dealing with the case of Victor Wilson -v- (1) Yahoo! UK Ltd (2) Overture Services Ltd. It dealt with the issue of whether the provision of keyword advertising by a search engine amounted to trade mark infringement under Article 9(1)(a) of the Community Trade Mark Regulation. It was found in that case that the Community Trade Mark in question ("Mr Spicy") had not been used by the defendants but by members of the public entering the trade mark into the search engine and the defendants' response did not amount to use.

A similar issue has now been decided by a US Court albeit in that case the search engine was not a party to the action. It was found that a company had infringed a rival's trade mark when it sponsored the term "Smart Money Clip" via Google. One aspect of how this case differed from the English decision though is that the term was also then displayed in the headline of the resulting advert.

It was therefore decided by the US District Court for the Northern District of California that there was "initial interest confusion" over the use of the term by Aroa Marketing meaning internet users would be likely to be diverted from the trade mark owner's site to that of a competitor as a result of their use of the mark. Aroa had used the Google Adword program to have their advert appear alongside the search engine results when someone typed in the term "Smart Money Clip", a trade mark of their rival money clip vendor Storus Corporation. Storus succeeded in their application for summary judgment.

Whilst deciding that there was no doubt the usage caused a "likelihood of confusion", Judge Maxine Chesney did not say whether use of the trade mark as a keyword alone would have amounted to infringement, had the mark also not appeared as the heading of the advert.

Google's policy in relation to such issues appears to differ depending on what jurisdiction is involved. In North America they will investigate claims which focus on the use of a rival's trade mark within the actual text of the advert but they will not investigate a company's use of a competitor's mark for advertising purposes when the adverts themselves don't actually contain the protected mark. The US and Canada aside, Google will investigate complaints of trade marks used as key words as well as their use in the actual adverts as French case law has previously found that the use of a trade mark as a trigger can constitute infringement.

However, this also means, bearing in mind the English court's decision in the Yahoo! case, that a business worried about a competitors use of their mark either as a trigger for their own adverts or as both a trigger and within their adverts would possibly be better off consulting Google themselves before issuing proceedings. As we previously noted, in the Yahoo! case the trade mark in question was "Mr Spicy" and the terms which appeared did so as the advertisers had bid on the term "Spicy" as opposed to the full trade mark. However, comments made by the judge in that case suggest that the verdict may well have been the same even if the keyword trigger were identical to the trade mark, i.e. "Mr Spicy".

Hopefully future cases on both sides of the Atlantic will add further clarity to this area which is obviously a concern for many businesses.