Tuesday, 29 September 2009

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

From: Hans Muhlberg [mailto:[email protected]]
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!

Tuesday, 15 September 2009


Issue 18, 15 September 2009

The Appeal Court’s recent decision that:

· the National Lotteries Board’s trade mark registration for Lotto was invalid because it was descriptive and

· the company behind Lottofun - a service that enables punters to buy Lotto tickets online, rather than queuing for them with the plebs - is not passing off its business as being associated with the National Lottery,

shows (yawn!) yet again how short-sighted it is to adopt a weak name.

Yes, you may hoodwink some dozy dude at the Trade Marks’ Office into registering your descriptive word, but there’s every chance it will be cancelled one day. And if it is, you’ll have to sue for passing off if you want to stop a competitor from using a similar name. And that’s a lottery at the best of times! Because, as the court said here, passing off protects a company from deception arising from a misrepresentation, rather than the name itself.

And there lay the problem for the National Lotteries Board - despite the fact that a couple of people signed affidavits claiming that they believed Lottofun was associated with the national lottery, the court didn’t believe them (although they didn’t come right out and say it, there’s every chance that their Lordships felt that gamblers simply can’t be trusted!). Users of Lottofun are, the court felt, quite clear on the fact that Lottofun is simply an agent that sells Lotto tickets. For one thing, the Lottofun site says so. And, for another, users of Lottofun are sophisticated (if you want to be a sophisticate, you’ll be pleased to hear that the bar isn’t set very high – according to the court you simply have to have a bank account and the ability to use a computer, you don’t need to see the absurdity in ploughing your hard-earned cash into a game offering the most outrageous odds!)

Alliance and Lotto, that’s two very clear warnings from our courts in the space of a few weeks. Hopefully, the message will start sinking in!

Tuesday, 8 September 2009

If Architects Had to Work Like Web Designers

If Architects Had to Work Like Web Designers
Unknown January 10, 2002

Please design and build me a house. I am not quite sure of what I need, so you should use your discretion. My house should have somewhere between two and forty-five bedrooms. Just make sure the plans are such that the bedrooms can be easily added or deleted. When you bring the blueprints to me, I will make the final decision of what I want. Also, bring me the cost breakdown for each configuration so that I can arbitrarily pick one.

Keep in mind that the house I ultimately choose must cost less than the one I am currently living in. Make sure, however, that you correct all the deficiencies that exist in my current house (the floor of my kitchen vibrates when I walk across it, and the walls don't have nearly enough insulation in them).

As you design, also keep in mind that I want to keep yearly maintenance costs as low as possible. This should mean the incorporation of extra-cost features like aluminum, vinyl, or composite siding. (If you choose not to specify aluminum, be prepared to explain your decision in detail.)
Please take care that modern design practices and the latest materials are used in construction of the house, as I want it to be a showplace for the most up-to-date ideas and methods. Be alerted, however, that kitchen should be designed to accommodate, among other things, my 1952 Gibson refrigerator.

To insure that you are building the correct house for our entire family, make certain that you contact each of our children, and also our in-laws. My mother-in-law will have very strong feelings about how the house should be designed, since she visits us at least once a year.

Make sure that you weigh all of these options carefully and come to the right decision. I, however, retain the right to overrule any choices that you make.

Please don't bother me with small details right now. Your job is to develop the overall plans for the house: Get the big picture. At this time, for example, it is not appropriate to be choosing the color of the carpet. However, keep in mind that my wife likes blue.

Also, do not worry at this time about acquiring the resources to build the house itself. Your first priority is to develop detailed plans and specifications. Once I approve these plans, however, I would expect the house to be under roof within 48 hours.

While you are designing this house specifically for me, keep in mind that sooner or later I will have to sell it to someone else. It therefore should have appeal to a wide variety of potential buyers.
Please make sure before you finalize the plans that there is a consensus of the population in my area that they like the features this house has. I advise you to run up and look at my neighbor's house that he constructed last year. We like it a great deal. It has many features that we would also like in our new home, particularly the 75-foot swimming pool. With careful engineering, I believe that you can design this into our new house without impacting the final cost.

Please prepare a complete set of blueprints. It is not necessary at this time to do the real design, since they will be used only for construction bids. Be advised, however, that you will be held accountable for any increase of construction costs as a result of later design changes.

You must be thrilled to be working on as an interesting project as this! To be able to use the latest techniques and materials and to be given such freedom in your designs is something that can't happen very often.

Contact me as soon as possible with your complete ideas and plans.

PS: My wife has just told me that she disagrees with many of the instructions I've given you in this letter. As architect, it is your responsibility to resolve these differences. I have tried in the past and have been unable to accomplish this. If you can't handle this responsibility, I will have to find another architect.

PPS: Perhaps what I need is not a house at all, but a travel trailer. Please advise me as soon as possible if this is the case.

Distinctive IP - First Come, First Denied

Issue 17, 8 September 2009 First Come, First Denied

We’ve only had our domain name dispute procedure for a short while. Which may explain the seemingly inexplicable Gardenmaster decision. The adjudicator ruled that a small cc that had used the name Gardenmaster for gardening services since 1969 (no that’s not a typo!) had to hand over a domain name registration which it had obtained in 2007 for www.gardenmaster.co.za to Masstores (Makro). A company that had started using the name Gardenmaster for a range of garden tools some 30 years later in 1999, registered the trade mark in the same year, and been irked in 2008 to find that the domain name was taken. The adjudicator had no doubt that the cc had registered the name www.gardenmaster.co.za to frustrate Masstores. So the registration was abusive.

The adjudicator was influenced by various factors. For example, the fact that the cc said it had registered the name in 2007 to ‘protect its rights’, after finding out that garden tools were being sold under the same name (apparently the right answer to the ‘why’ question is ‘so that we could start e-commerce’). The fact that the cc offered to sell the registration to Masstores for a significant amount after the retailer approached it. The fact that the cc didn’t answer written questions put to it by the adjudicator. The fact that the cc’s registration was formally in the name of an agent. And the fact that the cc hadn’t actually used the registration, in other words hadn’t established a site under the name. So it was apparently reasonable to infer that this was just a bad egg trying to frustrate Masstores from getting the registration.
Really! Here’s another possibility - on becoming aware of the fact that another company was using the name in a similar field, the cc thought hey we better make sure we can use our name for the website we will surely one day create, so let’s register it. Being unversed in these things, it used a marketing agent to do so. When Masstores finally woke up to the fact that it had failed to register an important trademark as a domain name, it said oh sherbet, someone else has it. So Masstores threw its mass around and said Gimme. And the cc thought, hey here’s a chance to make some nice money, so it tried to do a deal. And when Masstores refused to bite and instituted proceedings instead, the cc thought sod this for a lark, let’s just put our trust in the legal process (fools!).
There was no abuse here, no cyber-squatting, no taking unfair advantage of another’s rights, no registration primarily intended to frustrate another party. Just two businesses with rights to the same name. Which meant it was first come first served. But in this case the one that came second had the wherewithal to be awkward. So a different rule applied!

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