Search Engine Optimisation

As a potential user of Search Engine Optimisation (SEO) services, as well as solicitors specializing in internet and related laws, we recently examined the market and reviewed the services that are offered. As expected there is a huge variation in price and terms on offer. Some SEO providers are charging well into the thousands for a monthly subscription service while others charge a tenth of that, and seem to achieve as good and if not better results. In other words, it rarely follows that the more you pay the better the quality of service.

The pace at which SEO has developed into a multimillion industry in its own right has surprised the industry itself. The market is already flooded with providers, making promises of results to increase your business’ visibility, accessibility and many more terms which have become industry standard in the field of SEO. More and more providers are piling in to the market. So, given that the industry is largely unregulated, and the cost of SEO services can be so high, potential buyers of SEO services need to beware before buying.

It is possible that something along these lines may have motivated American Express’s advice in its Small Business Guide to the effect that SEO is a waste of money. The paragraph in question states: “Don’t waste money on so-called Search Engine Optimization (S.E.O) specialists. Search engines are very quick to penalize sites that try to trick their filtering techniques, and once your site has been put on Google’s blacklist, it will take forever to get off.” Naturally the advice did not endear American Express to the industry - see this blog – nor is it particularly helpful to those businesses that have decided they do want to invest in SEO, but need to know how to select the right provider.

While we are not qualified to comment on the quality of an SEO provider’s services, we can help businesses to ensure they select an SEO company on proper terms. You do not want an SEO that takes your money without making any contractual promises whatsoever in return. A business needs to understand that what can work one week may not work another week. Google changes its policy on listings from time to time and there is a distinct possibility that those with an SEO who uses unscrupulous tactics could find themselves removed from search engine listings altogether. The example of BMW’s removal from Google listings because of alleged “Black Hat” techniques such as to draw in web users could be replicated with the techniques engaged in by some SEO providers and send a business’ web marketing campaign into meltdown. Many SEO companies do not offer proper terms of business to cover a relationship of such substantial value, let alone any redress if they were to positively damage your business in this way. On the contrary those that do offer written terms tend to smatter them with exclusions of all warranties for their services.

Given the general lack of understanding in society as to what SEO activities actually involve in practice, it may be more difficult and expensive to sue the SEO company in these circumstances, assuming they were worth suing in the first place. If a business is not careful when choosing a provider it could end up paying significant amounts of money, and exposed to many tall promises and little in terms of remedy should the service badly underperform. We would strongly advise small businesses not to part with their cash without first looking carefully at the provider’s terms and conditions. The most effective way to prevent any problems that may arise is to make sure that the SEO service provider and the business owner are aware of what each other’s expectations are. You need to be clear what the SEO is specifically going to do for you to achieve the hoped for results. How much time will they spend on your project? What input will they require from you?

From the point of view of the SEO provider, they will not be able to promise the earth, there are many factors outside of their control, SEO remains a curious process and business owners will need to be aware that there are limitations to what is possible. However, the business owner will also have to ensure that the services are providing them with a service that can be relied on – i.e. the SEO stand by what they claim to deliver. Therefore key is an agreement ensuring that there is a sufficient understanding between each party and there are adequate remedies when either party is in default of its promises. Beware that a good number of SEOs are trying to tie down business owners to long term deals, which could prove disastrous if the project were to fail to deliver. SEO contracts which cover the necessary points are few and far between, so you will need lawyers that understand this area to vet the agreement before you are bound to it.

Worldwide clearance of names and the small business

Google’s Gmail litigation raises an important point about clearing names before use.

It is hard enough for a business to invent good distinctive names that are not already someone else’s trade mark in one country, let alone in several countries worldwide. The charges made by large search providers can be prohibitively high. A company could pay as much as £10,000 or more just to clear a name worldwide (in practice likely to be in key economies of the world and within the EU). Then there is the cost of trade mark filings on top. So if even wealthy organisations like Google get it wrong see here how does a small business manage this risk?

In managing the risk, there is a lot a business can do for itself by way of initial checks as suggested here, such as searching your desired name in a search engine like Google ®, and avoiding similar names that competitors are already using. However, it is important to understand that here are a host of reasons why a name may not show up on search engines and yet be someone else’s registered trade mark - for example, websites which use flash technology may not be picked up by the search engines, or the registered trade mark may not appear on the web even though it is in use. Alternatively, someone could have registered a trade mark intending to use it but not yet begun to use it (as long as they are within the 5 year limit on unused marks they can stop you using the name even if you begin to use the name before they get round to doing so). And then there is the further complexity that in some countries it is the first person to use a mark that gets superior rights to a name, whereas in others it is the first to file a trade mark.

So, what conclusions should a business owner draw from all this? Well, given that trade mark searches are all about reducing risk, the most important message is that it is better to do some searching than none at all.

There are also a number of options between the two extremes of conducting no searches, or paying the sort of sums that even large corporations may balk at paying. This could range from doing your own search engine searches, to also looking at available domain names, and checking the identical name on a few trade mark registers, such as that of the USPTO.

Bear in mind though that even if numerous trade mark registers are searched, for example, the national registers of the UK, Germany, France, and the US , what you find out is whether anyone has a trade mark over a word corresponding to your search term in that territory. It is also often going to be in a foreign language. So, searching all 27 countries within the EU would be extremely time consuming.

Therefore consider your search strategy in advance, both in terms of the country registers to be searched, and the search terms. Remember there is the added complication of understanding the search results themselves, given that trade marks are divided into classifications across goods and services. Identical marks can be registered in a number of different classes by different trade mark owners. For example, the mark ZENITH, produces 60 results on the UK IPO database. Understanding whether or not a new mark in that name could be successfully registered requires a solid understanding of the classification system, and how cross searching of classifications comes into play to determine whether a registration in one class extends protection into a class that is not specifically registered by the mark owner.

So, anyone having a new brand to clear ought to talk to their trade mark solicitors to see what searching is on offer. For example, could they do some searching of trade mark registers of key economies for you? I would say those of the US, UK/CTM, and certain national registers within the EU and Asia should be on the list. Such a search would not be designed to give the level of comfort of those of the large corporate search providers, but would nevertheless be adequate at a fraction of the price to significantly reduce the risks of trade mark litigation when you come to register your mark.

Generally the less risk you are willing to take the more thorough your searching needs to be. For example, even if you used a large corporate search provider, you could just restrict the search to the identical name, or you could ask for wider searching to cover certain alternative spellings and words sounding the same or having common prefixes or suffixes. You could also request common law searches. So, the first decision is what is your budget? Then let’s see what your money will buy for you by way of trade mark risk management.

Metatags and Trade Mark Use

Trade mark law like any IP right has been forced to adapt to the digital environment where trade marks are seen on virtually every web page available on the internet. The question is whether or not the appearance of the mark amounts, in certain circumstances to use of the trade mark.

Today many businesses use the internet as a means of procuring new customers. A competitive business will try to increase its prominence by using key search words that a user will search for within their website. Search engine optimisation is a significant investment for any business if it engages a professional search engine optimiser to help it move the order of search results on search engines in order to attract more visitors to the website.

The type of keywords used is a tactic in itself but the starting point for most businesses will be to try and use generic search terms related to the services they provide on their website. For example, a business based in London called Example Cleaners would perhaps start to use terms such as ‘Floor Cleaning’ or target users on a geographical basis, say for instance ‘Cleaners in London’. However, competitors would be using these same generic terms to attract users.

The obvious step is to use more distinctive, specific terms

What if you wanted to use a competitor’s trading name to benefit from their success so that each time someone searched for them your website appeared among the results? What if you bid on a competitor’s name as a keyword in your Google Adwords marketing so that each time anyone entered the competitors name in the search engines, your Adword selling similar goods or services appeared?

We have an answer from the High Court on the second question, which came up recently see here when Yahoo was successful in fending off an action against it by the owner of the mark MR. SPICY. The court decided that the words MR SPICY were not used by anyone other than the user who enters the phrase MR. SPICY as a search query in the search engine - in this case Yahoo’s search engine. It was felt by the court that the response that the search engine generates by the user typing the trade mark is not use of the trade mark by Yahoo.

Google loses Gmail trade mark case

Google’s unsuccessful EU wide trade mark application to register the name ‘G-mail’ shown here is a salutary lesson about the importance of registering rights to a brand early, and in all countries in which you hope to use it. When an EU application is successfully opposed in any one member state, as it was here, the entire application fails (although it may then be converted to individual country applications).

It is expected Google will appeal (see media report here) But in the meantime Google will not be using the name Gmail in Germany or the UK where the mark Gmail is registered by the Independent International Investment Research. This was also the subject of a dispute with Google (now settled on terms whereby Google agreed to use the word Googlemail instead of Gmail in the UK).

Unjustified Threats

One challenging aspect of advising small businesses is the vagueness of the law. It is difficult to give the clear, black and white answers business people need. One client recently asked me what letters we would be able to send out to enforce her design or trade mark rights if she registered them. She even wanted to know how much we would charge for such letters. She was unimpressed to hear about the threats legislation and that the price would largely depend on the facts. For a recent example of the threats provisions at work see here and for more details of the legislative provisions about designs see here, for trade marks, see s21 here and for Patents see here.

So, is it not worth registering rights given the uncertainties that exist and the potential costs of enforcement? I can only express my own opinion by explaining why Azrights has applied for a trade mark even though I know we would not be able to outspend a big corporation if it were minded to steal our brand. But that is to look at a worst case scenario. As the costs of infringement actions are so high for business – both in financial and resource terms – in practice, people are wary of infringing on other’s rights and try to get round them wherever possible. So, IP law does not generally involve squabbling in court over the existence or scope of rights. Rather than going to court to get a judge to tell them what they can and can’t do, the focus is on getting into the best position for reaching agreement on who should be allowed to do what.

In practice, if we did not register our rights it would be even more difficult to enforce them. Passing off actions are notoriously expensive to bring, and sustain. On the other hand a registered trade mark deters most people from infringing the rights. So, a registered right strengthens your position in achieving a negotiated solution. Disputes generally do not reach the courts and are settled, if both sides get the same advice about their respective prospects. It is only if both sides think they are going to win, or that anything can happen that settlement is less likely. As this is an important issue to many of our clients we will be coming back to these questions in future postings.