Google changes its trade mark policy in the
UK and in Ireland: The use of trade marked terms to trigger ads will be allowed,
starting May 5. This move brings the policy in line with the one in the US and
Canada.
Google might have announced the change
because of a recent High Court Ruling that cleared Yahoo of trademark
infringement. Victor Wilson, owner of a London based catering business had sued
Yahoo, after discovering that typing Mr Spicy, a name that he registered as a
Community Trade Mark, triggered sponsored links for Sainsbury's supermarket.
Yahoo asked for summary judgement, arguing that it had not used plaintiff's
trademark, and got it:
"The trade mark in this case is not used by anyone other than the browser
who enters the phrase "Mr Spicy" as a search query in the defendants' search
engine. In particular, the trade mark is not used by the defendants. The
response of the defendants to the use of the trade mark by the browser is not
use of the trade mark by the defendants.
That is enough to decide the case in the defendants' favour. But the
matter does not stop there. If, by some process of reasoning, one were to hold
that the search engine's response to the words used by the browser was, itself,
use by the defendants, in my judgment, it is not use of the mark "Mr Spicy". What, instead, is being used is the English word
"spicy" as it appears in that
phrase."
But please note: The advertiser had used the word "spicy"
as keyword, not "Mr Spicy", so its still possible that buying a keyword that
matches another firm's trade mark is unlawful in the UK.
Google's decision
might be a dangerous one that leads to more lawsuits.
Also see:
, 2008:
Questions referred
Where a trader which
is a competitor of the proprietor of a registered trade
mark and which sells goods and provides services
identical to those covered by the trade mark via its
website (i) selects a sign which is identical (in
accordance with the Court's ruling in Case C-291/00)
with the trade mark as a keyword for a search engine
operator's sponsored link service, (ii) nominates the
sign as a keyword, (iii) associates the sign with the
URL of its website, (iv) sets the cost per click that it
will pay in relation to that keyword, (v) schedules the
timing of the display of the sponsored link and (vi)
uses the sign in business correspondence relating to the
invoicing and payment of fees or the management of its
account with the search engine operator, but the
sponsored link does not itself include the sign or any
similar sign, do any or all of these acts constitute
"use" of the sign by the competitor within the meaning
of Article 5(l)(a) of First Council Directive 89/104/EEC1
of 21 December 1988 ("the Trade Marks Directive") and
Article 9(l)(a) of Council Regulation 40/942
of 20 December 1993 on the Community trade mark ("the
CTM Regulation")?
Is any such use "in
relation to" goods and services identical to those for
which the trade mark is registered within the meaning of
Article 5(l)(a) of the Trade Marks Directive and Article
9(l)(a) of the CTM Regulation?
Does any such use
fall within the scope of either or both of:
(a) Article 5(l)(a)
of the Trade Marks Directive and Article 9(l)(a) of the
CTM Regulation; and
(b) (assuming that
such use is detrimental to the distinctive character of
the trade mark or takes unfair advantage of the repute
of the trade mark) Article 5(2) of the Trade Marks
Directive and Article 9(l)(c) of the CTM Regulation?
Does it make any
difference to the answer to question 3 above if:
(a) the presentation
of the competitor's sponsored link in response to a
search by a user by means of the sign in question is
liable to lead some members of the public to believe
that the competitor is a member of the trade mark
proprietor's commercial network contrary to the fact; or
(b) the search engine
operator does not permit trade mark proprietors in the
relevant Member State of the Community to block the
selection of signs identical to their trade marks as
keywords by other parties?
Where the search
engine operator (i) presents a sign which is identical
(in accordance with the Court's ruling in Case C-291/00)
with a registered trade mark to a user within search
bars located at the top and bottom of search pages that
contain a sponsored link to the website of the
competitor referred to in question 1 above, (ii)
presents the sign to the user within the summary of the
search results, (iii) presents the sign to the user by
way of an alternative suggestion when the user has
entered a similar sign in the search engine, (iv)
presents a search results page to the user containing
the competitor's sponsored link in response to the
entering by the user of the sign and (v) adopts the
user's use of the sign by presenting the user with
search results pages containing the competitor's
sponsored link, but the sponsored link does not itself
include the sign or any similar sign, do any or all of
these acts constitute "use" of the sign by the search
engine operator within the meaning of Article 5(l)(a) of
the Trade Marks Directive and Article 9(l)(a) of the CTM
Regulation?
Is any such use "in
relation to" goods and services identical to those for
which the trade mark is registered within the meaning of
Article 5(l)(a) of the Trade Marks Directive and Article
9(l)(a) of the CTM Regulation?
Does any such use
fall within the scope of either or both of:
(a) Article 5(l)(a)
of the Trade Marks Directive and Article 9(l)(a) of the
CTM Regulation; and
(b) (assuming that
such use is detrimental to the distinctive character of
the trade mark or takes unfair advantage of the repute
of the trade mark) Article 5(2) of the Trade Marks
Directive and Article 9(l)(c) of the CTM Regulation?
Does it make any
difference to the answer to question 7 above if:
(a) the presentation
of the competitor's sponsored link in response to a
search by a user by means of the sign in question is
liable to lead some members of the public to believe
that the competitor is a member of the trade mark
proprietor's commercial network contrary to the fact; or
(b) the search engine
operator does not permit trade mark proprietors in the
relevant Member State to block the selection of signs
identical to their trade marks as keywords by other
parties?
If any such use does
fall within the scope of either or both of Article
5(l)(a) of the Trade Marks Directive/Article 9(l)(a) of
the CTM Regulation and Article 5(2) of the Trade Marks
Directive/Article 9(l)(c) of the CTM Regulation:
(a) does such use
consist of or include "the transmission in a
communication network of information provided by a
receipt of the service", and if so does the search
engine operator "select or modify the information",
within the meaning of Article 12(1) of European
Parliament and Council Directive 2000/31/EC3
of 8 June 2000 on certain legal aspects of information
society services, in particular electronic commerce, in
the Internal Market ("the E-commerce Directive")?
(b) does such use
consist of or include "the automatic, intermediate and
temporary storage of information, performed for the sole
purpose of making more efficient the information's
onward transmission to other recipients of the service
upon their request" within the meaning of Article 13(1)
of the E-commerce Directive?
(c) does such use
consist of or include "the storage of information
provided by a recipient of the service" within the
meaning of Article 14(1) of the E-commerce Directive?
(d) if the use does
not consist exclusively of activities falling within the
scope of one or more of Article 12(1), 13(1) and 14(1)
of the E-Commerce Directive, but includes such
activities, is the search engine operator exempted from
liability to the extent that the use consists of such
activities and if so may damages or other financial
remedies be granted in respect of such use to the extent
that it is not exempted from liability?
If the answer to
question 9 above is that the use does not consist
exclusively of activities falling within the scope of
one or more of Articles 12-14 of the Ecommerce Directive,
may the competitor be held jointly liable for the acts
of infringement of the search engine operator by virtue
of national law on accessory liability?
____________
1
- First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade
marks OJ L 40, p. 1
2
- OJ L 11, p. 1
3
- OJ L 178, p. 1
