Brands Bulletin - August 2010

Welcome to this month's Ashfords’ Brands Bulletin.

This month we are, once again, addressing the issue of the legality of choosing the registered trade marks of third party competitors as keywords (via Google’s AdWords service).  This is in light of a very important decision of the European Court of Justice, handed down on 8th July 2010.

AdWords, Keywords and Trade Mark Infringement

Many of our readers will be well aware of Google's AdWords service.  In summary, it enables an advertiser to purchase particular keywords which, when typed by users into Google's search engine, trigger the display of an advert by that advertiser and a link to their website.

Trade mark owners particularly resent the fact that their competitors often try to register their trade marks (or very confusingly similar marks) as keywords.  This is because when a member of the public types their trade marks into Google’s search engine facility, the website of the trade marks owner is not the first website identified in the search results but, in fact, it is the trade mark owner’s competitor’s website.

The only way for trade mark owners to prevent this is to make sure they purchase their own trade marks (and all similar marks) as keywords, via Google's AdWords service.  Put bluntly, they have to be prepared to pay Google more money than their competitors are willing to, in order to purchase their own trade marks as keywords.

For some time there has been a debate as to whether this activity by competitors of trade mark owners is lawful, or whether it constitutes registered trade mark infringement.  Some clarity was given earlier this year by the European Court of Justice' ("ECJ") in the Google France case, but further and more detailed guidance was handed down by the ECJ on 8th July in the case of Portakabin Ltd & Anor v Primakabin BV.

In summary, the ECJ has confirmed that if you purchase and use another's trade mark (or something very similar) as a keyword then this can constitute registered trade mark infringement.  This will be the case where the advertisement that is displayed (i.e. when the keyword is typed into Google's search engine by a user) does not make it sufficiently clear to the average internet user that the advertised goods/services do not originate from the trade mark owner or an economically linked undertaking of the trade mark owner. 

The ruling is very good news indeed for registered trade mark owners.  It provides useful, practical guidance as to when the use of a third party's registered trade mark as a keyword will constitute registered trade mark infringement and what defences (if any) might be available to the infringer.     

Later this year, or next year, another case (Interflora v Marks & Spencer) is due to go before the ECJ concerning the AdWords program.  It should provide even greater clarity on the interaction between registered trade mark owners' rights and the legality of third party traders purchasing the trade marks of their competitors as keywords.   We will keep you updated of any developments in that case.  

Should you wish to receive further editions of the Ashfords' Brands Bulletin, please email  g.holmes@ashfords.co.uk

Ashfords LLP is regulated by the Solicitors Regulation Authority. The information in this note is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.