Online Trademark Rights

 

There have been several cases over the past few months of companies making cases for trademark infringement based on the bidding of keyword searches on Google Adwords and other search engines. (Google Adwords removed their policy of excluding trademarked keywords in their bidding in 2008.)

 

For example you may have heard of the cases of Lush vs Amazon, or Interflora vs  Marks and Spencer.

In both cases the case made was that the companies (Amazon and M&S) bid on keywords containing their trade mark within Google’s AdWords service in order to trigger results on their site. 

Google Adwords allows you to purchase keywords used in their search engine so that a sponsored link appears whenever internet users search for that term.  

The confusion lies that if I were to search Interflora and Marks and Spencer came up, I may falsely believe that they are a part of the same chain. And that is exactly what trademarks are for: protecting consumers from confusion. 

The same goes for Amazon and Lush that if I searched for Lush products and was led to similar products on Amazon I might believe that they were sold under the Lush company.

The main point here is If you bid on a distinctive trade mark in Google Adwords you are infringing on the rights of that company.

HOWEVER,

The key is DISTINCTIVENESS. Many trade marks contain words within them that are descriptive or generic. For example our name trade mark Direct contains the word trade mark, which is descriptive of our business, but in itself not a trade mark.

A competitor of ours foolishly tried to claim we were infringing their rights by bidding on the word "trade mark". This is wrong, since the word itself is DESCRIPTIVE and not part of the entire trade mark. If we had bid on their actual trade mark, to protect their name we will refer to them as "Trademark Turkey" then their case would have been more legitimate since in the search engine results consumers might have believed we were associated with them. 

But what about mentioning Trade marks on your site?

Say you want to mention that you provide a service that is better than your competitors. This is comparative advertising.

Legally you can mention a competitors trade mark if you compare two or more comparisons of your businesses.

However, you can't mention them if there is only one point. 

To round up I will briefly mention HTML tags.

In recent years Google has paid less attention to trade mark infringement in HTML tags and web page rankings, but as a rule of thumb it is better to avoid using other businesses trade marks since we have had clients requesting us to contact a business using their trade mark, which we have, and they have been forced to change it. 

I hope this has helped you understand a little more about your trademark rights online

Kind Regards 

Alex Corona


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