UK: Google Win Key Battle in Search Term War

Originally published January 2005

Google recently won a key legal battle in the war ranging over the practice of selling competitors registered trade marks as search terms on its world famous search engine. However, the war is most definitely not over yet and this may be the opening salvo in a protracted dispute.

Leading US auto-insurance company Geico bought an action of trade mark infringement and unfair competition against Google through the US Courts, on the basis that Google had sold Geico's registered trade marks as search terms to Geico's competitors. Therefore, if you were to place the word Geico, for example, in a Google search you would often be diverted to sponsored listings of Geico's competitors. Geico alleged that such a practice confused consumers and diverted trade away from it and towards its competitors.

On the 15 December, the U.S. District Court for the Eastern District Court of Virginia, where the case was being heard, granted Google's application for summary judgement concerning the sale of key words which trigger sponsored links to competitors websites, making no reference to Geico or its marks. The court effectively found that Geico had not provided any evidence that Google's practices of selling registered trade marks as search terms, which triggered sponsored links to advertisements which made no reference to Geico, caused confusion amongst the purchasing public. The case, however, is to continue with regards Google's practice of selling registered trade marks as search terms to competitors which trigger sponsored links to websites which make reference to Geico or its registered marks. The war is not over, but Google has won a key skirmish.

The US courts conclusions seem oddly reminiscent of the conclusions of Justice Robin Jacobs in Reed Executive plc and Reed Solutions v. Reed Business Information Ltd and Reed Elsevier (UK) Ltd and totaljobs.com Ltd, in the English Court of Appeal on 3 March 2004.

The 'Reed case' principally concerned, amongst other things, Reed Business Information's purchase of the word Reed as a term in a number of search engines to trigger banner adverts, Reed being a registered trade mark owned by Reed Executive plc. The keying of the word Reed by RBI in the Reed case as a trigger for banner adverts was held not to be trade mark infringement. The adverts only referred to totaljobs (a trading name of RBI) and no 'visible' reference was made to the words Reed at all. Jacob found that the public know that all sorts of banner ads appear when they conduct a search and such ads may be triggered by something they have typed in the search. However, the public is educated to these 'results with much rubbish thrown in'. Jacob found the idea that a search under the name Reed would make anyone think there was a trade connection between a totaljobs banner making no reference to the word Reed was fanciful.

However, the Geico and Reed decisions should not be viewed as a green light to the purchase of competitors registered trade marks as search terms. Geico failed to convince the judge of its case principally on the basis that it had not provided sufficient evidence that the public were actually being confused. It is possible therefore that a case may come along where the evidence of confusion is sufficiently strong to support a successful trade mark infringement action. Further, the Reed decision was formulated on the basis of very particular circumstances. Other trade mark infringement actions regarding Google's search term practices are ongoing in the US and the outcome of these actions can not be predicted.

The principle of all these cases is that the battle for supremacy on the web can be messy, and involve protracted and costly legal battles.