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.

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.