The High Court has recently considered trade mark infringement through the use of a competitor’s mark as a Google keyword and in related internet advertising. The case itself was relatively straightforward on the facts, with the court finding that both the use of the claimant’s mark as a Google keyword and the appearance of that mark in the resulting internet adverts did amount to both trade mark infringement and passing off. However, the judgment was most notable for the judge’s comments on the impact of Brexit on UK trade mark infringement, post the Retained EU Law (Revocation and Reform) Act 2023 (“REUL Act”) coming into force.
Google keywords, internet advertising and trade mark infringement
The claimant trades as “Advance Track” and owns a registered UK trade mark for that name, covering various goods and services including outsourcing of services from accountants. The defendant, a competitor of the claimant, deliberately used “advancetrack” (which the court held to be identical to “Advance Track”) as a Google keyword and inadvertently used that same word and other variations (such as “Advancetrack Outsourcing”, which was not identical to “Advance Track”) in the text of the resulting internet adverts. An example of such text is set out below:
“Advancetrack Outsourcing – Payroll Outsourcing – UK Outsourcing
Outsource your compliance work to us, focus on more profitable work and reduce costs”
Unsurprisingly, given these facts and the particular manner in which the sign was used in the ad text, the court found that this amounted to trade mark infringement and passing off in respect of both the use as a keyword and the use in the text of the resulting internet advert. Whilst the use in the ad text was inadvertent (having been included by the defendant’s marketing consultant in error), the court found that this nevertheless amounted to use by the defendant as it had instructed its consultant to run the adverts and had control over them. It could have checked the adverts and asked for them to be amended or removed before they went live or once the problem arose. But it failed to do so.
Unfortunately, as the judge concluded, this case is therefore a helpful example of how not to use a competitor’s mark in keywords and resulting ad text. And in this sense, it is instructive.
Impact of Brexit and REUL Act
The decision is most interesting, however, for the judge’s comments on the impact of the REUL Act on trade mark infringement.
As readers will know, the EU Trade Marks Directive (most recently the 2015 Directive) was implemented in the UK through the Trade Marks Act 1994 (“TMA”). Whilst the UK was part of the EU, the UK courts were required to interpret the TMA consistently with the 2015 Directive due to the principles of supremacy of EU law and indirect effect. Following Brexit and the entry into force of the European Union (Withdrawal) Act 2018, whether or not these principles continue to apply to any particular piece of EU-derived legislation depends on whether the relevant provisions have been amended since 31 December 2020. For provisions unamended since that date, the principles of supremacy of EU law and indirect effect continue to apply. However, for provisions amended since that date, the extent to which these principles apply depends on whether the application of those principles is consistent with the intent of the modification.
Section 10 of the TMA (which deals with infringement) has not been amended since 31 December 2020 and so, as things stand today, section 10 still needs to be interpreted consistently with the 2015 Trade Marks Directive and retained EU case law. However, this is about to change. Under the REUL Act, the principles of the supremacy of EU law and indirect effect will cease to apply from 1 January 2024, regardless of when the relevant domestic legislation was passed or last amended. That does not mean that EU law becomes irrelevant – for example, if domestic legislation (such as the TMA) was enacted to implement an EU directive, that may be relevant context (as an “external aid”) in its interpretation on the usual domestic statutory interpretation principles - but it may make divergence more likely.
With these changes in mind, the judge considered whether this case would have been decided differently if the court had applied the principles of ordinary domestic statutory interpretation. And, on the facts of this particular case, it found that it would not. But it will be very interesting to see how these changes play out in the courts from next year and beyond.