Keyword Advertising: Time to Forget Your Trademarks?
The Advocate General has paved the way for a ruling from Europe's top court that advertisers are free to use their rivals' trade marks to bring up their own adverts on search engines.
Keywords
When you do a Google search, you are presented with two sets of results. On the left-hand side are the search results – those websites which Google has determined are the most relevant to your search term. On the right, or sometimes along the top, are the "Sponsored Links" – adverts.
The adverts appear because the advertiser is paying Google to bring up its advert when the search term is used – they have registered that term as a keyword, or "AdWord" in Google parlance. The same system is used by other search engines, such as Yahoo!
Why the Fuss?
Keyword advertising becomes contentious when the advertiser uses someone else's trade mark as a keyword. Interflora is currently suing Marks & Spencer for using "Interflora" as an AdWord. If you Google "Interflora", an advert for "M&S Flowers Online" appears with the search results.
Until recently, the trade mark owner had two options. There was the expensive route of suing the advertiser for trade mark infringement. Or, there was the infinitely cheaper and faster option of requesting Google to remove the advert under its AdWords policy, which forbade the use of other people's trade marks without permission. In 2008, Google changed its policy in the UK and cut off the second option. Now, it permits advertisers to use other people's trade marks as AdWords – hence Interflora had to take the expensive route of suing M&S.
The Latest Development
Whether Google's new policy is actually legal is unclear. In the EU, the issue of AdWords has been referred to the European Court of Justice (the "ECJ"), the ultimate arbiter on EU trade mark law.
The Advocate General has advised the ECJ that neither (a) the advertiser in registering another's trade mark as an AdWord, or (b) Google in offering the trade mark for registration as an AdWord, is infringing the trade mark. The ECJ follows the Advocate General's advice in approximately 80% of its decisions. While we wait for the ECJ to give its decision (which can often be a long wait), the Advocate General's opinion is the definitive statement of the law in this area.
As things stand, neither Google nor M&S is infringing Interflora's trade mark. If M&S went one step further and either (a) displayed Interflora's trade mark in its Google advert (AdWords themselves are not visible to the searcher), or (b) used the mark on the website to which the advert linked, then this would, in all likelihood, constitute trade mark infringement. Google, however, would not be doing anything wrong.
Mishcon's View
It cannot be right that, for example, Adidas could register "Nike" as an AdWord and then divert people looking for Nike trainers to its own website.
So strongly does Mishcon feel about this that we have devised a solution for our clients which should enable them to stop Google from selling off their trade marks in this way.
If you would like to find out more about Mishcon's solution or anything else raised in this briefing, please contact Jeremy Hertzog on +44 (0)20 7440 7264 or by e-mail, or Peter Nunn on +44 (0)20 7440 4768 or by e-mail.