Competitor pay per click campaigns where a company bids for the
name of a rival in the hope that a customer or client who searches
for a particular company will not notice when a similar company,
rather than the company they selected, appears in the search
suggestions. This practice has always been regarded as a little
In a tit-for-tat case involving two plumbing firms who had both
been trading since 2001 the question of keyword advertising
involving a rival's company name was considered when both firms
had been employing the practice of bidding for each other's
Victoria Plum (formerly Plumb) Limited –v- Victorian
Plumbing Limited, the similarity of the companies names makes it
abundantly clear that there is a propensity for confusion between
the two firms. Victorian Plumbing Limited had mounted a
pay-per-click campaign and had been bidding for the keywords -
Victoria Plum and variations of the name - on Google the result of
which was designed to activate an advert for Victorian Plumbing
Limited rather than Victoria Plum Limited. Victoria Plum Limited
brought proceedings against Victorian Plumbing Limited claiming
that the bidding amounted to a trade mark infringement, whereupon
Victorian Plumbing Limited brought a counterclaim for passing off
against Victoria Plum Limited as they, Victoria Plum Limited, had
also been bidding in a pay per click campaign for
Victorian Plumbing Limited's name as a keyword with exactly the
same objective, to trigger an advert for their services.
The judge considered the case for trade mark infringement made
by the complainant and concluded that when internet visitors were
particularly searching for Victoria Plum Limited's products and
services that confusion was occurring on a significant scale and
that the defendant's adverts were unlikely to "enable
normally informed and reasonably attentive internet users, or
enable them only with difficulty, to ascertain whether the goods or
services referred to by the advertisements originate from Victoria
Plum(b) or an undertaking economically connected to it, or on the
contrary, originate from a third party". Therefore the
infringement claim was valid.
Victorian Plumbing Limited responded with a common law defence
that of "honest concurrent use" based on the fact that
both firms had been in the same market since 2001. The court
considered all relevant facts and concluded the function of a trade
mark is unaffected by the honest concurrent of the same or very
similar trade marks by two separate entities. The judge also found
that Victorian Plumbing Limited could not rely on their defence as
it only entitled a party to use their own name and as Victorian
Plumbing Limited could not claim honest concurrent use as it had
only used the trade mark in their key word advertising, amongst
The judge turned to the counterclaim of passing off which
Victorian Plumbing Limited brought on the basis that they had been
trading for a few months before Victoria Plum Limited started
trading. He decided that Victorian Plumbing Limited had built up
goodwill by the time Victoria Plum Limited started their campaign
and a substantial amount of customers were likely to have assumed
that Victoria Plum Limited was actually Victorian Plumbing Limited
or connected to the company. The judge concluded that this amounted
to misrepresentation which was likely to cause damage to the
Pay-per-click campaigns and key word advertising are strong
tools that a considerable number of businesses employ but a
competitor pay-per-click campaign comes perilously close the
misrepresentation and infringement issues.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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