Trade mark law like any IP right has been forced to adapt to the digital environment where trade marks are seen on virtually every web page available on the internet. The question is whether or not the appearance of the mark amounts, in certain circumstances to use of the trade mark.
Today many businesses use the internet as a means of procuring new customers. A competitive business will try to increase its prominence by using key search words that a user will search for within their website. Search engine optimisation is a significant investment for any business if it engages a professional search engine optimiser to help it move the order of search results on search engines in order to attract more visitors to the website.
The type of keywords used is a tactic in itself but the starting point for most businesses will be to try and use generic search terms related to the services they provide on their website. For example, a business based in London called Example Cleaners would perhaps start to use terms such as ‘Floor Cleaning’ or target users on a geographical basis, say for instance ‘Cleaners in London’. However, competitors would be using these same generic terms to attract users.
The obvious step is to use more distinctive, specific terms
What if you wanted to use a competitor’s trading name to benefit from their success so that each time someone searched for them your website appeared among the results? What if you bid on a competitor’s name as a keyword in your Google Adwords marketing so that each time anyone entered the competitors name in the search engines, your Adword selling similar goods or services appeared?
We have an answer from the High Court on the second question, which came up recently see here when Yahoo was successful in fending off an action against it by the owner of the mark MR. SPICY. The court decided that the words MR SPICY were not used by anyone other than the user who enters the phrase MR. SPICY as a search query in the search engine – in this case Yahoo’s search engine. It was felt by the court that the response that the search engine generates by the user typing the trade mark is not use of the trade mark by Yahoo.