Using Trademarks as Keywords
E-commerce has been continuously evolving over the past few years, so has been the trademark laws worldwide. This has been a common practice among the online business entities to use the competitors’ brand name, slogan, domain name, product name as keywords. This strategy is essentially a trick of displaying aids targeted towards users searching for a certain keyword of your competitors.
Typically, online digital media advertising companies such as Google Adwords, etc. do not object to it as they put up a defense stating that they cannot literally verify each keyword used by the advertisers as to whether it is a “trademark” or not, unless it is one of the popular global brands.
Although the aforementioned defence pretty much works on the favour of advertising companies in defending themselves as not being party to the infringement, it only protects the advertising agency and not necessarily the advertiser who used the keyword knowingly.
Famous Cases – Trademark Infringement through Online Advertising
This was decided on a famous case between Bharat Matrimony vs Jeevan Shaadi and others. In this case, Google was also included as a party and was directed to pay a hefty penalty.
Another landmark decision comes from The Advocate General of the European Court of Justice (ECJ) which decided that Marks & Spencer infringed Interflora’s trademark rights by purchasing the florist’s name as a Google AdWord.
Interflora started legal proceedings when Mark and Spencer purchased its trademarked name as an AdWord from Google, meaning that users searching for “Interflora” could be presented with an advert that connects them to the M&S website instead.
The new opinion makes it clear that M&S should be liable for trademark infringement, although the proposal is not binding and is subject to a final ECJ ruling.
Fashion group LVMH, owner of the Louis Vuitton brand, won a similar case last year at the ECJ, which ruled it was allowed to protect its trademarks from being used as AdWords, without the consent of Google.
Kirsten Gilbert, a partner at law firm Marks & Clerk, says the decision means firms should avoid using rivals’ trademarks for search advertising.
It is in your best interest to not use your competitor’s trademarks as keywords, unless you want to bring up on yourself a hefty penalty and a 3- to 4-year long legal battle.