A press release from International law firm Bird & Bird earlier this week summarises that firm's successful defence of Yahoo! UK and its sister company Overture Services in a rare English trade mark infringement action concerning keywords and sponsored search results. In this case the Chancery Division held that, when Yahoo! matched search terms entered by users to keywords bid on by advertisers in order to display sponsored links, there was no use of a trade mark for the purposes of infringement.

This action was brought by the proprietor of the MR SPICY Community trade mark for food, sauces and spices and the provision of food and drink, who objected that sponsored links to third parties' websites appeared whenever a user typed "MR SPICY" into Yahoo!'s search engine. Yahoo! said the advertisers whose sponsored links appeared had not purchased "MR SPICY" as a keyword: the sponsored links appeared due to matching technology which responded to the input of the words "MR SPICY" by displaying sponsored links to advertisers who had bid on related keywords, such as "SPICY". The judge struck out the action and the CTM owner did not appeal.

Class 46 has a copy of the full text of the decision. Email here if you'd like to see it.