Trademarks Archives

Google AdWords & Trademark Infringement – Use of Competitor Trademarks in EU

Google is now permitting EU advertisers to use the trademarks of competitors as keywords in its AdWords service, however, if you are using a competitor’s trademarks in your advertisement you could still be liable for trademark infringement.

What is Google AdWords?

Google AdWords displays paid for advertisements to the right of the Google search engine results when a specific term is searched for in Google. Many advertisers use competitors’ brand names as keywords in their AdWords advertisements so that when their competitors name is entered as a search term in Google, their own advertisement appears.

Trademark Infringement by Google

There have been a number of European court cases where brand owners, such as LVMH have claimed that Google is breaching trademark law by allowing competitors to use its trademarks as keywords in Google AdWords. It was established in the LVMH case that Google was not infringing the brand owner’s trademarks, but that the advertiser may be liable for trademark infringement.

Trademark Infringement by the Advertiser

In a recent Dutch case the European Court of Justice ruled on the issue of whether or not an advertiser using a competitor’s trademarks as keywords in an AdWords advertisement is liable for trademark infringement. The court ruled that there is a trademark infringement by the advertiser (not Google), if the advertisement creates confusion about which company is behind the advertisement.

New Google Trademark Policy

As a result of the above decisions, Google will from the 14th of September allow companies advertising on Google AdWords in Europe to use trademarked terms as keywords in their AdWords advertisements. However, according to Google’s amended trademark policy competitors will still be able to complain about the use of their trademark by an advertiser if they feel that it leads to a specific advertisement which confuses users about the origin of the advertised goods and services.

Google will conduct a limited investigation and if it finds that the advertisement does confuse users as to the origin of the advertised goods and services, it will remove the advertisement.

Advertisers Beware

Although Google itself will not be infringing trademark law by permitting advertisers to use third party’s trademarks as keywords, the advertiser themselves could still be liable for a trademark infringement. The UK courts will be left to decide whether or not a trademark infringement has taken place in each individual case.

Help

For assistance with trademark issues or any other IT legal issues contact:

irene.bodle@bodlelaw.com
www.bodlelaw.com

To register for my newsletter click here

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Google Adwords & Trademark Infringement

Are you paying for sponsored links on a search engine and using a competitor’s trademark as a search term? If so, you could be liable for trademark infringement following the recent European Court of Justice ruling in the decisions in Google France SARL, Google Inc. (C-236/08 to C-238/08) 23rd March 2010.

Who is the Trademark Infringer?

All over Europe trademark owners have been trying to stop competitors and advertisers from using their trademarks as search terms in sponsored links on Google. Many trademark owners have started trademark infringement claims against search engine providers and the advertisers who use their trademarks in Google adwords as search terms.

In this decision Google was not held liable for a trademark infringement, on the basis that Google were not “using “ the trademark and were simply creating the technical conditions for advertisers  to “use” the trademark. However, it does not mean that the advertiser is not committing a trademark infringement. The Court said that the advertiser could be liable for trademark infringement where key words which are trademarks are used in order to generate sponsored links to websites offering identical goods and services, if the advertisement did not make clear to the average Internet user that the goods and services did not come from the owner of the trademark, or an undertaking economically connected with the trademark owner.

What should Trademark Owners do?

You should carefully monitor any sponsored links appearing in search results for your trademarks. If you think that the sponsored link is confusing Internet users about who is actually providing the goods and services, notify Google (or other search engine provider concerned). Once the search engine provider/Google, has actual notice of the unlawful nature of the sponsored link it should act quickly to remove or disable access to the sponsored link, or it could be liable for publishing the data.

Alternatively, you can initiate trademark infringement proceedings against the search engine provider and the advertiser.

What should Advertisers do?

If a trademark owner initiates a trademark infringement claim against an advertiser in the UK, the UK courts must decide whether or not a trademark infringement has taken place.

Therefore in order to avoid this risk, if you plan to use the trademarks of your competitors as search terms in sponsored links, the link and the advertisement must sufficiently distinguish you from the trademark owner, or you could be liable for trademark infringement.

The sponsored link should not cause confusion in the mind of the average Internet user as to whether or not the goods and services are being provided by the trademark owner.

Help

For assistance with trademark issues or any other IT legal issues contact:

irene.bodle@bodlelaw.com
www.bodlelaw.com

To register for my newsletter click here

______________________________________________________

Other related articles:

  
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