Tuesday, 29 September 2009

Distinctive IP: Issue no.20, Taking Google's Word For It, is attached.

From: Hans Muhlberg [mailto:mail@muhlberg.co.za]
29 September 2009 06:31 AM

When you type in a word on a search engine you get two types of results, natural results and ads. The natural ones come up by dint of a clever algorithm, the ads because advertisers have bought that word. These words are called keywords or, in the case of Google, Adwords. There’s no limit on how many companies can buy the same keyword, nor on what words you can buy. This means that a company can buy another company’s trade mark as a keyword. And that means that when you type in a trade mark as a search term you may well end up going to sites of companies that compete with the brand owner, or even sell counterfeit products.

So does buying and selling trade mark keywords infringe trade mark rights? Many brand owners say yes, but the world’s biggest brand owner (arguably!) says no. There have been conflicting decisions and, as a result, Google sells trade mark keywords in some countries but not others. The European Court now has to decide a case involving the Louis Vuitton trade mark, which was bought as a keyword by both competitors and counterfeiters. The Advocate General (AG) has given his opinion, which will now go to the European Court for consideration.

The AG - who was at pains to point out that he was simply dealing with trade mark keyword use, and not the further use by the advertiser of the mark on its site - took Google’s side. He said this:

· When Google presents a trade mark keyword to an advertiser there is no use of the mark on the goods covered by the trade mark registration (e.g. handbags), but rather in relation to its keywords service. So the use is internal to Google.

· When Google presents the trade mark keyword to the public, there may be use on the brand owner’s goods, but there’s no confusion. Why? Because internet users are savvy enough to know that not all natural results and ads which flow from a search on a trade mark relate to the brand owner itself, and they will examine the site first before making any assessment.

· A trade mark is not a classic property right that allows total control, and this type of informative use should be allowed - to hold otherwise would be to place an unacceptable restriction on the rights of others to operate in cyberspace, e.g. those operating 2nd hand sites and product review sites.

· Google is not contributing to an infringement by the advertiser, unless it sells a keyword consisting of a trade mark followed by a word like ‘copy’ or ‘replica’.

· The advertiser buying the keyword isn’t infringing the trade mark either – it’s simply acting privately as a consumer of Google’s services.

Not only does this opinion legitimise an important source of revenue for Google, but it puts brand owners under considerable pressure to buy their own trade marks as keywords. It’s important stuff!

1 comment:

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