Trademarks and the Internet
16th Jun 2008
Trademarks and the Internet
Eight years or so ago a refreshingly clean search interface developed by Larry Page and Sergey Bryn overtook the likes of Yahoo! and MSN to become the web’s most popular search engine. At the time, many asked how the site was ever going to make any money. As Google powers forward, it makes you wonder whether those commentators were living in a parallel universe.
Of course, hindsight is a wonderful thing. It’s doubtful that even Page and Bryn perceived then that Google would, within a decade, become one of the world’s wealthiest and most powerful companies. But if information is what powers the world economy, then Google must be the 21st century’s Standard Oil.
In 2006, Google’s advertising revenues in the UK overtook Channel 4. Late last year, it reached a par with ITV.
Although Google has a diverse product range these days, it is still the AdWords service on the search engine that provides its most significant revenue stream.
For the uninitiated, AdWords are the little text adverts that pop up to the right of your search results. Containing a short title (25 characters), two lines of description (each 35 characters) and a link to another website, they are triggered by your search query.
Such a powerful tool can be used in very damaging ways of course, which is why Google operates a procedure through which trade mark owners can complain to Google about the unauthorised use of trade marks in AdWord advertisements.
Google investigates and usually suspends the advertisement in question. The trade mark term in dispute is also then blocked from further use in AdWords for the future.
If you’re looking to start using AdWords, you might want to use a competitor’s trade mark term in the text of your advertisement. You might also want to make your own advert appear when a user taps in the name of a competitor as a search term.
For example, if you enter the term ‘Waterstones’, an AdWord advert for WHSmith pops up.
Google still processes complaints relating to the use of trade marks in third party AdWord text, but since April, it no longer accepts complaints about keywords. As May 5, keywords that were previously the subject of a successful complaint will be unblocked.
Predictably, this has generated a surge of fury amongst some of the UK’s biggest retailers.
Teletext has openly threatened other travel agents with litigation if it finds its name used as a keyword, although this doesn’t seem to have deterred Co-op Travel and First Choice, both of whom are evidently making use of the mark as part of a keyword trigger for their Adword adverts.
A consortium of brand owners including Arcadia (Top Shop and Dorothy Perkins, etc), Saga and LastMinute.com was reported last week as having met privately to discuss whether any action may be taken against Google.
It’s a murky area. To be an infringement, the trade mark in question must be used “as a sign”.
Those brand owners would have to establish first that an infringement had occurred and this would mean convincing the courts that the keywords in question were a sign even though they didn’t appear in the adverts themselves. Kind of a stretch on what is usually thought of as a sign I’d say.
The problem is that there hasn’t actually been much litigation on this subject so we have to interpret the conclusions of the courts in quite different fields (for example, a football merchandise case on which a number of London’s finest IP lawyers billed enough to retire on).
Of course, the mere existence of Google’s previous policy didn’t prevent the brand owners from litigating this issue before. They just chose not to, preferring the quicker and cheaper results generated by going direct to Google. So they have been hoisted by their own petard, so to speak.
At times like this, I like to come back to the core function of a trade mark – that it should act as a guarantee to the consumer of the trade origin of the goods or services to which it is applied.
If you lived in London and wanted to buy electronics, you might head to Tottenham Court Road where you’d see all the biggest names side by side. I wonder whether WHSmith’s advert next to the search results for Waterstones is really so different?
Matthew Rippon is a partner at BHP Law specialising in contentious and commercial intellectual property matters. Contact him on 01325 376524 or at matthewr@bhplaw.co.uk
Author: Matthew Rippon, Partner (MatthewR@bhplaw.co.uk)
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