Mr Spicy sues Yahoo & loses

Update: Some of the information originally posted below has been retracted

The High Court has recently dismissed a case brought against Yahoo by the UK businessman Victor Wilson. Mr Wilson sued Yahoo for failing to prevent brands such as Sainsburys and PriceGrabber.co.uk bidding on the trademark of “Mr Spicy”.

According to the court documents the case hinged on the fact that the advertisers were bidding on the general term “spicy” rather than targeting the trademark directly.

The Yahoo! companies argued that advertisers whose sponsored links appeared had not purchased “MR SPICY” as a keyword. Instead, sponsored links appeared due to matching technology which responded to the input of “MR SPICY” by displaying sponsored links to advertisers who had bid on related keywords, such as “SPICY”. Mr Wilson claimed this was also trade mark infringement.

In short, the judge agreed with Yahoo:

Yahoo! asked for summary judgment, arguing that it had not ‘used’ Wilson’s trade mark or that any use by Yahoo! did not amount to ‘trade mark use’.

Mr Justice Morgan accepted Yahoo’s arguments.

“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,” he wrote.

He continued: “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.”

“Mr Wilson is not able to prohibit the use of the words ‘Mr Spicy’ even when they are being applied to goods identical to those for which the mark is registered if that use cannot affect his own interest as proprietor of the mark having regard to its functions,” he wrote.

He pointed out that the text of the adverts complained of made no reference to Wilson’s business. “There is a reference to Sainsbury’s,” he wrote. “It does not say that all food sold at Sainsbury’s has Mr Wilson’s trade or business as an origin. It is not pretending that Sainsbury’s food all comes from Mr Wilson’s trade or business, MR SPICY.” Thus he concluded that the text of the ads could not have an adverse impact on Wilson’s trade mark rights.

Categories: Search

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