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.

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.