Wilson v Yahoo! UK Ltd and Others

JurisdictionEngland & Wales
JudgeMR. JUSTICE MORGAN
Judgment Date25 February 2008
Neutral Citation[2008] EWHC 361 (Ch),[2008] EWHC 487 (Ch)
CourtChancery Division
Date25 February 2008
Docket NumberCase No: 1HC 710/07,CaseNo:HC07C00057

[2008] EWHC 361 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY DIVISION

Royal Courts of Justice

Strand. London. WC2A 2LL

Before:

Mr. Justice Morgan

Case No: 1HC 710/07

Between:
Victor Andrew Wilson
Claimant
and
(1) Yahoo! Uk Ltd
(2) Overture Services Ltd
Defendants

The Claimant appeared in person.

Mr. B. Brandreth (instructed by Messrs. Bird & Bird) for the Defendants.

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HTML VERSION OF JUDGMENT

MR. JUSTICE MORGAN
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1. This is an application by the defendants for summary judgment against the claimant and/or for an order striking out the claimant's claim against the defendants.

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2. I will begin by describing who the parties are. There is a description of the claimant, written by himself, in some Particulars of Claim which he prepared at an early point in this action. It was at the point when the defendant was Sainsbury's plc and did not include the present defendants. None the less, it appears helpful to describe the claimant in his own words. What he said was that he had carried on business as a mobile caterer in the name or style of “Mr. Spicy”, which he described as “the Trade Name”, since 1985. He said his business included selling Afro-Caribbean and Halal South Asian snacks under that Trade Name, first, from a van and later from a trailer at carnivals, melas and other festivals throughout London. He stated that over the years members of the public who attended such events regularly came to know the claimant and his delicacies. He said many such persons enjoyed his products and recommended them to others.

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3. There is something not quite right in the next part of the pleading but, putting it in my own words, what Mr. Wilson, the claimant, said was that members of the public sought out his trailer by reference to the Trade Name and they associated that Trade Name with him and not with anyone else.

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4. Before turning to the defendants, it is convenient to recite that Mr. Wilson brings this claim as proprietor of a Community Trade Mark. The Community Trade Mark in question has the number 002398014. The trade mark consists of the two words MR. SPICY and the claimant pleads that that trade mark is registered in relation to three classes of goods or services. They are: Class 29, which refers to meat, fish, poultry and game; Class 30, which refers to sauces (condiments), spices (including prepared meals and snacks whose main ingredients are proper to this Class); and Class 42, providing food and drink and including restaurant and bar services. It is not necessary to go into the history of the registration of that trade mark save to say that the claimant pleads that he was duly registered and the fact of registration was published on 24 th March 2003.

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5. Turning to the defendants, I take a brief description of the defendants from the defence they have served in these proceedings. Starting with the second defendant, Overture Services Ltd, it is said to be the provider of “sponsored search engine technology” The first defendant, Yahoo UK Ltd is said to make the second defendant's sponsored search engine results available to the public, e.g. through its website at the domain yahoo.co.uk. The first defendant is also the provider of separate search engine technology. The first and second defendants are connected, as they are both subsidiaries of Yahoo Inc, a corporation based in the United States.

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6. I now turn to the claim which is made in the pleadings which have already been served by the claimant. Towards the end of this judgment I will refer to a Draft Amended Particulars of Claim and consider the new allegations made in the draft amendments. But in the first part of this judgment I will address the claims which are extant in the existing pleadings and which are the target of the defendants’ applications for summary judgment or to strike out the claim.

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7. I will read paragraph 3 of the existing Particulars of Claim as it is set out. It may be that there are one or two grammatical glitches in the wording, but I will read it as it is in the pleading. It reads as follows:

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“The claimant believes that the defendants has infringed the exclusive rights conferred by Article 9(1)(a) of the Community Trade Mark Regulations ( Council Regulation EC No. 40/94 of 20 December 1993 on the Community Trade Mark) by use made (whether by accident, negligence and/or intent) in the course of trade after the date of publication of registration the sign ‘Mr. Spicy’ a sign that is identical to the CTM in relation to goods or services that are identical to those for which the CTM is registered without the claimant's consent.”

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8. I should add at this point that the word “CTM” which is used in the passage I have read out is defined elsewhere in the pleading as meaning the Community Trade Mark which is MR. SPICY.

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9. Under paragraph 3 of the existing Particulars of Claim there are certain particulars given. They are in these terms:

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“Until after disclosure and further information from the defendant the best particulars of the claim it can give are as follows: (a) In or about November 2006 when a browser typed in the keyword ‘Mr. Spicy’ on Yahoo UK and Ireland and other search engines, it would direct them to Sainsbury's Supermarket Ltd's website www.sainsbury's.co.uk [Class 42 providing food and drink including restaurant and bar services] under the commercial search results (‘sponsored listings’).

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In or about December 2006 it would also direct them to Pricegrabber.com Ltd's website www.pricegrabber.co.uk.

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(b) The claimant will rely on a webpage published on a Yahoo search, UK and Ireland, a copy of which appears on page 2 to 3 of the bundle.”

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10. The Particulars of Claim appear to be a claim to recover damages, and interest on such damages, resulting from the infringement. The Particulars which I have read cross-refer to a part of a webpage which is attached to the Particulars of Claim. It is convenient to summarise what is shown by the print-out from the webpage. This is plainly something that appeared on the screen when a browser or a searcher typed in the words “Mr. Spicy” in the defendants’ search engine. The page which has been printed and referred to in the Particulars of Claim shows a search that was carried out on 14 th December 2006. I understand the search was done by Mr. Wilson himself.

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11. The search results show that there were 515 responses to the search query “Mr. Spicy” The pages in the bundle show the first 10 of those responses. I am not asked to pay any specific attention to the 10 responses which are shown in this way. Instead, my attention has been drawn to two features of the page as printed. The first is that before the numbered responses there are two items under the heading “Sponsor Results” The first of these refer to Sainsbury's and the second refers to Pricegrabber.

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12. It is relevant, I think, to refer to the precise terms in which the sponsor results are given. The first, relating to Sainsbury's, is in these terms: “Delicious meal ideas for all occasions www.sainsbury's.co.uk, food news, inspiration and recipes from Sainsbury's on-line.” That is the entry for Sainsbury's. I comment that there is no use in that entry of the word “spicy” or of “Mr. Spicy” The second entry relates to Pricegrabber and the entry there begins with the word “spicy” underlined. It then follows with: www.pricegrabber.co.uk, compare prices on a variety of products at Pricegrabber.”

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13. It can be seen that if one puts “Mr. Spicy” as a search query into the search engine operated by Yahoo one gets these two links, one to Sainsbury's and one to Pricegrabber. They are said to be links to sponsors and they come before the numbered responses which I have referred to. The second feature of this page to which my attention is drawn is that on the right hand side of the page, the right hand side being largely blank, there is the heading “Sponsor Results” and, underneath, the words “Advertise your site here” So what is being communicated by Yahoo to whoever it is who is carrying out the search and looking at this screen is that it will be possible for that person to contact Yahoo to place an advertisement for that person's site on a page such as this, to be seen no doubt when someone else types in the combination of words “Mr. Spicy”

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14. That is the way in which the infringement is pleaded by Mr. Wilson at the present time and before I come in due course to deal with the draft amendments to the Particulars of Claim.

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15. Because that pleading refers to the Council Regulation dealing with Community Trade Marks it is convenient for me to go to that Council Regulation at this point and refer to all of the relevant provisions, although I will defer discussion of their application until later in this judgment. The pleading identified Council Regulation No. 40 of 94. My attention was drawn to one of the recitals to that Regulation which is in these terms:

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“Whereas the protection afforded by a Community Trade Mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and the goods or services, whereas the protection applies also in cases of similarity between the mark and the sign and the goods or services, whereas an interpretation should be given of the concept of similarity in relation to the likelihood of confusion, whereas the likelihood of confusion, the appreciation of which depends on numerous elements and in particular on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified...

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1 cases
  • L'Oreal SA v Ebay International AG
    • United Kingdom
    • Chancery Division
    • 22 Mayo 2009
    ...link did not involve “use” of the sign in question by eBay Europe. In support of this argument, counsel for eBay Europe relied upon Wilson v Yahoo! Ltd [2008] EWHC 361 (Ch), [2008] ETMR 33. In that case the claimant was the proprietor of a Community trade mark consisting of the words MR SP......
2 firm's commentaries
  • Google Adwords And The Use Of Competitors' Trade Marks On The Internet
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    • Mondaq Australia
    • 11 Diciembre 2008
    ...– The Parallel World of Keyword Ads, Vol 98 No 3 The Trademark Reporter, 906 32. [2004] EWCA CIV 159 33. ibid at [137] to [140] 34. [2008] EWHC 361 (CH) Case No. 1HC 35. ibid at paragraph 77 36. ibid at paragraph 82 37. What is Google's trademark policy? http://adwords.google.com/support/bi......
  • Intellectual Property Update Spring 2008: Focus On The UK
    • United Kingdom
    • Mondaq United Kingdom
    • 23 Mayo 2008
    ...(Case C-276/05) 8. Joined Cases C-427/93, C-429/93 and C-436/93 [1996] ECR-I-3457 9. Wilson v Yahoo! UK Ltd and Overture Services Ltd [2008] EWHC 361 (Ch) 10. Arsenal Football Club plc v Matthew Reed [2003] ETMR 19 11. Reed Executive v Reed Business [2004] RPC 40 12. The Community registry ......

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