Trade marks as keywords?

My recent trip to INTA was interesting on many grounds, which I hope to report on over the next few weeks, particularly as regards the insights I gained into why anyone having products manufactured in China needs to register a Chinese trade mark quite regardless of whether they intend to sell their products in China.

However, today I wanted to write something about Google's recently revised policy on adwords advertisers bidding on third parties’ trade marks as keywords. Google will no longer block such keywords in response to complaints from trade mark owners. Previously its policy involved verifying that the claim of a trade mark owner was legitimate and if it was, banning the word from use as a keyword by its adwords customer.

There has been criticism of Google’s decision to relax its policy, with some trade mark owners fearing their marks will suffer damage as a result of being available for advertisers to bid on as keywords. Brand owners like lastMinute.com have even suggested they may take legal action against Google due to its change of policy – see their comments in The Times here.

In many ways, Google may be wise to step back from a role which was becoming almost quasi regulatory. It could be quite arbitrary to ban use of certain words as a keyword simply because of a trade mark complaint. This had the potential to be used as a tactic to prevent legitimate competition, by preventing use of words which are arguably not used in a trade mark sense - the question whether use of marks as keywords is ‘trade mark use’ is a hotly debated one.

The Cour de Cassation in France was very recently faced with the problem whether adwords was trade mark use - as reported by the class 46 blog here. The Cour de Cassation has asked the ECJ two questions in order to address the dispute at hand – namely, whether or not trade mark owners have the right to prevent their trade marks forming part of sponsored links, and whether the trade mark owner can prevent such use where the sponsored links take unfair advantage of, or are detrimental to, the distinctive character or the repute of the trade mark.

The answers to these questions may help to ease the uncertainty that is currently faced and give a definitive answer on this point to trade mark owners, and users of sponsored links.

Website Scraping

In recent years, a number of comparative websites have appeared online in which consumers can compare prices of a number of businesses without the need to search individual websites.

Websites such as Expedia use special web crawling software which accesses information from various websites in order to obtain information – key to the consumer being price information. Whilst the technique is of benefit to consumers in many ways, as the user can compare a number of prices or products with one search, there are potentially legal implications for those websites that employ web crawling software to search other websites.

The websites that are subjected to web scrapping by web crawler software are faced with a dilemma. One the one hand, there is potential for extra business generated through referrals from a comparison website, whilst on the other hand it distracts consumers away from their own website and their own marketing and branding. There is also an increase in website traffic, pushing up maintenance costs and slowing the user experience down when their website is accessed directly.

What remedies there are to a website owner could, in many instances, be limited. Whilst website terms and conditions may prohibit use of web crawling software to extract information, an automated machine does not read, understand and agree to terms and merely extracts information from the website. The consequence is that there is an issue of whether such terms of use could ever be incorporated and enforceable.

As websites have their information organised in databases which are arranged in a systematic and methodical way, there could be some reprieve for European Union businesses through the Database Directive. However, this is untested and in a national decision of the Danish Maritime and Commercial Court (Copenhagen), the court ruled in 2006 (in Danish only) that using deep linking and extracting information using web crawling software was not in conflict with national law or the Database Directive. It remains to be seen if other member states take the same view, and what the European Court of Justice's view would be.

If the access is unauthorised, there is an argument to support the idea that the Computer Misuse Act 1990 is breached – it is likely that the access provided by web crawling software is unauthorised access to computer material. Any aggrieved website owner would of course still have the task of persuading the authorities to initiate criminal proceedings against an alleged offender.

For the meantime, websites who are aggrieved by web scrapping seem to have little recourse in law, and may for the meantime be better served by technological means such as road blocking software if they want to prevent web scraping.

McDonalds opposes McSweet’s trade mark application

An established trader in USA has been selling pickled goods under the name McSweet for a number of years. However, as soon as he filed an application for a trade mark at the USPTO McDonald’s opposed the registration on the grounds that the mark was confusingly similar to the McDonalds brand reported here by the IPkat.

This is quite predictable, as it is well known that McDonald’s policy is to oppose any food related trade marks beginning with the prefix Mc even where a substantial part of that trade mark is only remotely similar.

Although there may be a legitimate case in many instances for a small business to adopt a name that a larger, more established brand opposes, the question inevitably turns on whether it has the resources to fight its corner.

On the other hand established brands do need to take care not to throw their weight around indiscriminately, as this can sometimes generate substantial negative publicity and damage the reputation of the very brand the business was seeking to protect. The question is whether this case has harmed McDonald’s. The other interesting point is the effect on McSweet – it seems the publicity generated by the case has attracted more business to McSweet’s website than it ever had before.