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.
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