Google Adwords trade mark policy change - has the law changed?

So I have just received this:

 

 

-----Original Message-----

 

From: Google [mailto:[email protected]]

 

Sent: 04 April 2008 11:11

 

To: Alex Chapman

 

Subject: Google Trademark Policy Update

 

Hello,

 

We're writing to inform you that we're changing our trademark complaint procedure in the UK and Ireland . This change may affect how we handle the trademark complaint you currently have on file with Google.

 

If you've submitted a complaint letter requesting that we prevent advertisers from using certain trademark terms anywhere in their ad text, we will continue our efforts to support your request. However, from May 5, 2008, our trademark complaint investigations will no longer result in Google monitoring or restricting keywords for ads served to users in the UK and Ireland . This will bring our procedure in line with the approach taken in the US and Canada . Complaints received on or after today will be processed under our revised procedure.

 

You do not need to file your trademark complaint with us again unless you would like to amend it based on the new guidelines. For more detailed information regarding our trademark complaint procedure, we invite you to review our revised complaint procedure, posted online at http://www.google.co.uk/tm_complaint.html.

 

To learn more about this trademark policy revision, please visit http://adwords.google.com/support/bin/answer.py?answer=92877&hl=en_US.

 

Sincerely,

 

Advertising Legal Support Team

 

Very Interesting

 

I believe this follows the recent decision in the "Mr Spicy" case where the Judge held that the only use of the trademark was made by the user entering the search term into the browser. This use was not considered to be use which would amount to trademark infringement.

 

My view is that that decision is a very dangerous one to rely on as the claimant was a litigant in person and his claim was against Yahoo.

 

Yahoo's lawyers would therefore have had no trouble persuading the judge that the use of the trade mark as an adword was not actually use by the search engine.

 

However Google have taken the opportunity to change its policy and that may mean that those using the trade marks of others will be laughing - and I suspect there will be a few more lawyers kept busy.

 

It seems that it is still trade mark infringement or passing off to use a third party's trade mark (registered or unregistered) as an adword but only by the person purchasing the ad words - not the person (such as Google) selling it.

 

I can't agree that this is good law and I would expect many of my peers to agree.

 

I suspect therefore that when the time comes there will be more letters to write to Google to persuade them that the court's ruling is wrong (or at least can be distinguished on its facts) and if that doesn't work I suspect that court action will follow - hopefully brought by someone represented by lawyers who are able to address the relevant issues and therefore provide some clarification.

 

For those interested the relevant part of the Trade Marks Act 1994 is set out below.

Would you not say that selling the adword "Coca Cola" that was "use in the course of trade of a sign"?

The Trade Marks Act 1994 (http://www.opsi.gov.uk/acts/acts1994/Ukpga_19940026_en_1.htm)and the CTM Regulation (which covers Community Trade marks) provide that a trade mark owner can prevent a third party from using in the course of trade a sign which is:

 

1. identical with the trade mark in relation to goods or services which are identical with those for which it is registered

 

2. (a) identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

 

(b) similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

 

and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

 

(3) (a) identical with or similar to the trade mark, and

 

(b) used in relation to goods or services which are not similar to those for which the trade mark is registered,

 

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.


Topic:

Comments

Trade Mark

If a trademark owner complaint with Google about the use of their trademark in AdWords ads, Google will investigate and may enforce certain restrictions on the use of that trademark in AdWords ads and as keywords. Policies apply only to trademarke where the owner submitted a valid complaint to Google and requested that the terms be restricted in Google ad campaigns like below has some points for belong to your policies:
1. Reseller and informational site policy.
2. Authorization policy.
3. Details of EU and EFTA policy.
and if you want to see more information about our policy on the use of trademarks in these area are:
1. Ad display URLs,
2. google search results,
3. Promoted You Tube videos.

If I walked into a store,

If I walked into a store, asked the sales assistant about a Sony widescreen TV, and the sales assistant showed me the Sony TV, then recommended the Panasonic range of TVs (because he's paid higher commission on those products)... is that trademark infringement?

That's the offline equivalent of what Google is doing.

Someone asks Google about "Sony widescreen TVs".. Google shows links to sites about Sony TVs and also shows a related sponsored link about Panasonic TVs, which pays them higher commission.

As long as the ad text doesn't include the word "Sony" in a misleading manner, I don't see how any sane court could consider such use in keywords as trademark infringement. If they did, then it would have to also apply to the offline scenario.

Adwords and trademarks

Do you think the case against the purchaser of the keyword is stronger if they've used your trademark in the creative of the ad? Many people use the search term as the "headline" of their ad. So if Supermarket A had bought the adword "Supermarket B" and someone entered "Supermarket B", then Supermarket A's ad would appear, headlined "Supermarket B". Surely this is passing off / mis-use of Supermarket B's trademark?

yes and no - typical

yes and no - typical lawyers answer I know but:

on the one hand it gives two bites at the cherry

on the other it depends how it is used. If the advert says "Supermarket A sells beans for 40p - Supermarket B sells them for 39p" and that is true and honest then there is arguablly no trade mark infringement because the law accepts honest use of third party trade marks in some circumstances - such as fair comparative advertising.

My view is that if the trade mark is used unfairly to trigger the advert then that something that the law should protect against protect against.

There will of course be circumstances where it is fair to use the third party mark - such as where you specialise in repairing BMW cars you should be able to say so - even though you don't have permission from BMW.

 

 

 

The problem is that the

The problem is that the Trade Mark law refers to the use of the mark or sign, likely to confuse the public. Adword keywords are not viewable by the public and therefore cannot be construed as 'a trade mark used by a third party in the course of trade' Just my opinion, time will tell

Indeed the question of

Indeed the question of "sign" is an issue that occupies the minds of teh court and all those involved.

However arguably a sign doesn't have to be visable to humans. It can be heard (on the radio for example) and that should count and I think that, in teh right circumstances, the fact that it could be viewed electronically could be found to be sufficient.

Also under section 10(1) of teh Act there is no need for confusion - just use of an identical mark for identiocal goods or services.

Where there is similarity only then confusion is an issue and this is where i think there is greater difficulty for enforcement.

 

"walk tall, speak softly but carry a big stick"