Trade Marks as Keywords?

May 29, 2008

My recent trip to INTA was interesting on many grounds, which I hope to report on over the next few weeks, particularly as regards the insights I gained into why anyone having products manufactured in China needs to register a Chinese trade mark quite regardless of whether they intend to sell their products in China.

However, today I wanted to write something about Google’s recently revisedpolicy on adwords advertisers bidding on third parties’ trade marks as keywords. Google will no longer block such keywords in response to complaints from trade mark owners. Previously its policy involved verifying that the claim of a trade mark owner was legitimate and if it was, banning the word from use as a keyword by its adwords customer.There has been criticism of Google’s decision to relax its policy, with some trade mark owners fearing their marks will suffer damage as a result of being available for advertisers to bid on as keywords. Brand owners like lastMinute.com have even suggested they may take legal action against Google due to its change of policy – see their comments in The Times here.

In many ways, Google may be wise to step back from a role which was becoming almost quasi regulatory. It could be quite arbitrary to ban use of certain words as a keyword simply because of a trade mark complaint. This had the potential to be used as a tactic to prevent legitimate competition, by preventing use of words which are arguably not used in a trade mark sense – the question whether use of marks as keywords is ‘trade mark use’ is a hotly debated one.

The Cour de Cassation in France was very recently faced with the problem whether adwords was trade mark use – as reported by the class 46 blog here. The Cour de Cassation has asked the ECJ two questions in order to address the dispute at hand – namely, whether or not trade mark owners have the right to prevent their trade marks forming part of sponsored links, and whether the trade mark owner can prevent such use where the sponsored links take unfair advantage of, or are detrimental to, the distinctive character or the repute of the trade mark.

The answers to these questions may help to ease the uncertainty that is currently faced and give a definitive answer on this point to trade mark owners, and users of sponsored links.