Intellectual property – trade marks/passing off Victoria Plum Ltd (t/a as “Victoria Plumb”) v Victorian Plumbing Ltd and others

When will keyword bidding constitute trade mark infringement or passing off?

The facts

The claimant (Victoria Plum) and the first defendant (Victorian Plumbing) were bathroom retailers which operated primarily online. They had co-existed under their highly similar names since 2001.

The claimant alleged that the defendant had infringed its trade marks by (1) bidding on its name and minor variations of it (“victoria plumb”, “victoria plum” and “victorian plumb”) as online search engine terms, and (2) by displaying its own marks (“victoria plumbing” and “victorian plumbing”) in advertisements on searches of those terms.

The claimant argued that an average customer who typed into Google the names “Victoria Plumb” or “Victoria Plum” is looking for, and expecting to find, advertisements for the claimant’s website. It submitted that the public were being confused by advertisements for the defendant’s websites, since the signs “Victorian Plum”, “Victoria Plumbing” and “Victorian Plumbing” were confusingly similar to the claimant’s marks.

The defendant admitted that the signs were confusingly similar, but relied on a defence of honest and concurrent use – namely that, having co-existed peaceably without complaint over many years, the parties had to live with the resulting confusion, and that the claimant’s trade mark did not constitute a unique guarantee of origin for those customers who were confused. In addition, the defendant alleged that the claimant was estopped from pursuing its claim by the fact that it had likewise bid on “Victorian Plumbing” as a keyword from 2011 to 2016. Finally, the defendant submitted a counterclaim for passing off.

The decision

The judge found the signs complained of were “Victoria Plumb” and trivial variations on that sign. This constituted use of signs identical to, or immaterially different from, the claimant’s trade marks.

The judge went on to find that the claimant had established a valuable reputation and goodwill in the name “Victoria Plumb”, and that the keywords were identical or confusingly similar to the claimant’s marks. Further, there was nothing in the defendant’s advertisements which indicated that they were not for a business of or connected with the claimant. The presentation of the defendant’s advertisements did not enable normally informed and reasonably attentive internet users (or enabled them only with difficulty) to ascertain whether the goods or services referred to originated from the claimant, from an undertaking connected with it, or from a third party. The acts complained of therefore satisfied the Google France test for trade mark infringement.

The judge set out the factors which will ordinarily be taken into account in determining the application of the honest concurrent use defence. He concluded that the defendant could not claim honest concurrent use of the claimant’s marks for the simple reason that it had never used those marks other than by bidding on them as keywords. Accordingly, the defendant was liable to the claimant for trade mark infringement.

With regards to the counterclaim for passing off, the judge found that the defendant had built up sufficient goodwill in the name “Victorian Plumbing” to be able to bring a passing off claim against the claimant. Internet users who searched for “Victorian Plumbing” were likely to be looking for the defendant’s website, and, as a result
of the claimant’s keyword bidding, were likely to be presented with the claimant’s advertisements. This meant that a substantial proportion of the public were likely to have been misled into believing that the claimant was, or was connected with, the defendant, which constituted misrepresentation. Accordingly, the defendant’s counterclaim for passing off was also successful.

Why is this important?

This is the first time that passing off has been made out in relation to a keyword trade mark infringement case in the UK, and the first time that the defence of honest concurrent use has been considered in the context of bidding on keywords.

Any practical tips?

Businesses should review any use of third party trade marks in connection with their online advertisements to confirm whether this may amount to trade mark infringement and/or passing off (in accordance with the guidance from Google France).