Copyright Sunday, June 22, 2008 Duncan Bucknell
IP Review, issue 22
This article was first published in CPA's IP
Review, issue 22.
When Google launched its AdWords advertising programme
in 2003, keyword-linked advertising seemed to herald the future
of online advertising. If only it didn't infringe brand
owners' IP Rights in the process, says
It all seemed to make perfect sense. Companies looking to
ensure their details appeared at the top of a web search
results page simply had to purchase 'pay-per-click'
advertising banners that linked to particular industry-specific
search terms. So, for example, if a consumer was looking to
find 'trademark counsel', the law firm that had
sponsored those keywords with a search engine provider, such as
Google or Yahoo!, would appear next to the actual search
results. It sounds no different from selecting the appropriate
keyword terms as website metatags for your own website. That
is, after all, how search engines work.
And yet the potential for IP infringement has proved immense,
as businesses looking to cash in on their competitors'
goodwill have taken to purchasing trademark-protected terms
(for example, the brand or product names of their competitors)
as part of their sponsored keyword triggers in order to divert
some of the potential customers of their competitors to their
own websites. Worse still, say brand owners, Google and its
peers have chosen to turn a blind eye.
Trademark owners have started to protest, filing lawsuits
claiming trademark infringement, unfair competition, and
trademark dilution. To date, Google, AOL's Netscape search
engine, Yahoo! and Excite have all been sued for keyword
infringement, with mixed results. Most jurisdictions are clear
that trademark infringement exists if a company uses another
company's trademarks as metatags on its own website, but
they are divided as to whether the use of trademarks in
keyword-linked advertising is trademark infringement or simply
a fair means of competition.
France has already ruled that in 'some' circumstances
it does count as infringement, but UK courts have found the
opposite to be true: in their minds the sponsored ads are
clearly labelled as such, so the potential for consumer
confusion (necessary to prove the common law tort of passing
off) has been adequately reduced.
Google, for its part, argues that one of the critical steps in
effective advertising is placing the ad where interested
consumers may see it. It...