Trade marks can be infringed by a competitor’s use of an identical (or confusingly similar) Google ‘keyword’. However, there must be evidence that this had an adverse effect on the functions of that trade mark (in particular the origin function), in accordance with established case-law from the Court of Justice of the European Union (“CJEU”). This is the position for now, until the key provisions of the Retained EU Law (Revocation and Reform) Act 2023 (“REULA”) come into force on 1 January 2024, removing the supremacy of EU law with respect to laws passed before 31 December 2020, among other changes.
In the recent High Court judgment of E-Accounting Solutions Ltd (T/AS Advancetrack) v Global Infosys Ltd (T/AS GI Outsourcing), Judge Tindal helpfully proceeded to assess the domestic position regarding s.10 of the Trade Marks Act 1994 (“TMA”), which relates to trade mark infringement, in the wake of the REULA provisions in question. The Judge considered that there is no statutory provision that requires an adverse effect on a trade mark. In his view, therefore, a ‘purposive interpretation’ of the above TMA provision, especially s.10(1), concerning ‘double identity’, is required.
In 2010, the Claimant had registered a UK trade mark for the words ‘Advance Track’ in relation to, among others, ‘accountancy services’ in Class 35.
In March 2021, the Defendant, a competitor of the Claimant, had instructed their marketing consultant to include ‘advancetrack’ as a keyword in their Google AdWords campaign, which promoted identical services. The word ‘Advancetrack’ had also been included in the Defendant’s internet adverts accessed by that keyword (“Internet Ads”).
In September 2021, the Claimant issued proceedings against the Defendant before the High Court. The Claimant asserted that the Defendant’s use of the keyword ‘advancetrack’, as well as their use of the phrase ‘Advancetrack’ in their Internet Ads, had infringed the Claimant’s registered trade mark ‘Advance Track. The Claimant also asserted passing off.
The Defendant denied any infringement and filed a counterclaim asserting that the Claimant’s trade mark was invalid based on alleged descriptiveness and customary character. It also asserted that the Claimant’s trade mark should be partially revoked for non-use.
High Court Decision
In assessing whether the Defendant had infringed the Claimant’s trade mark under s.10 of the TMA, the Judge concluded that the parties could rely on authorities of EU Law and that Brexit had made no difference to this case.
The Judge found that the keyword ‘advancetrack’ and the Claimant’s mark ‘Advance Track’ were identical under s.10(1) of the TMA. He held that the Defendant infringed the Claimant’s trade mark by its keyword use of ‘Advancetrack’ (and Internet Ads) under ss.10(1) and (2) of the TMA. Even if the Internet Ads had not contained the word ‘Advancetrack’, the Judge would have found that use of the keyword alone would have infringed the Claimant’s mark, by applying the ‘Google France test’.
The Judge also found that the Defendant’s use of the word ‘Advancetrack’ in the Internet Ads infringed the Claimant’s trade mark under ss. 10(1), (2) and (3) TMA. With regard to s.10(3), the Judge found that the Defendant’s use of the word ‘Advancetrack’ diluted the distinctiveness of the Claimant’s mark and tarnished its reputation.
The Court also dismissed the Defendant’s counterclaim for invalidity based on descriptiveness and customary character and partial revocation of the Claimant’s mark for non-use.
In addition, the Court found that there was passing off, as all three elements (i.e., goodwill, misrepresentation and damages) had been proved.
The Judge deemed this to be trade mark infringement (as well as passing off) but was also mindful to explore the approach had this case been brought to the Court in 2024, when REULA comes fully into force. He noted that “with such seismic changes to EU-derived domestic legislation on the horizon, it is increasingly important that the legal position in each case is pro-actively considered.”
The Court explored the difficulties surrounding s.10(1) of the TMA and that a literal interpretation would render any use of an identical trade mark for identical goods/services as an infringement, even without an adverse effect. As a result, Judge Tindal took cognisance from the case of Brent LBC v Risk Management Partners  2 WLR 166 (SC) and adopted a purposive interpretation as s.10 was implemented to reflect the case-law of the CJEU. The Judge opined that this could be used as an external aid, meaning that to require infringement would necessitate adverse effect on the trade mark. He stated this would be necessary because it would not be Parliament’s intention to render something unlawful that has no adverse impact. He also stated that without adverse effect, the alleged infringement would not create a likelihood of confusion nor any unfair advantage.
This decision highlights some of the teething issues that may come into play with the key provisions of REULA coming into force on 1 January 2024. It is also significant due to the increasing importance of internet advertising. Judge Tindall coined this a ‘legal minefield’ illustrating the difficulty in navigating this particular area. Businesses that wish to use a trade-marked term as a keyword should seek to ensure that the body of the advert makes clear to consumers that they are not the trade mark owner. Notwithstanding the Court’s attempt to clarify this area, uncertainty remains so please seek advice on specific campaigns especially with 2024 just around the corner.
Article co-authored by Greg Rock, Trainee Solicitor at CMS.