Trademark Licensing in Keyword Advertising

• Author: Maciej Zejda
• Pages: 18-29

2016

Maciej Zejda

18

1

Trademark Licensing in Keyword Advertising

by Maciej Zejda*

© 2016 Maciej Zejda

Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and

conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obtain ed at http://nbn-resolving.

de/urn:nbn:de:0009-dppl-v3-en8.

Recommended citation: Maci ej Zejda, Trademark Licensing in Keyword Advertising, 7 (2016) JIPIT EC 18, para 1.

Keywords: Trademark; Keyword Advertising; Licensing; Sponsored Links Campaigns

in the case of the double-identity rule. Thirdly, the

article discusses the negative aspects of broaden-

ing the concept of taking advantage and isolates this

concept from the possibilities of confusion, detriment

to the distinctive character, or the reputation of the

trademark. Lastly, the article proposes possible rem-

edies to the current situation – in particular the intro-

duction of licensing models for the use of trademarks

in keyword advertising and the application of the law

on comparative advertising regarding the way the li-

censee uses those trademarks.

Abstract: This article examines the use of

trademarks as keywords in sponsored links cam-

paigns - in particular the impact of such usage on

consumer confusion. It is thus important to highlight

that there are a number of reasons why a consumer

uses search engines. For example, it may be that a

consumer searches for a type of product or service

that appeals to them; the consumer may engage in

comparison-shopping; or the consumer may already

know the specific brand that he or she intends to

purchase. Secondly, this article explores the possibil-

ity of infringement on other functions of trademarks

A. Introduction

1

Internet advertising can lead to a number of complex

problems related to trademark infringements, in

particular concerning consumer confusion. The aim

of this paper is to analyse the view taken by the Court

of Justice of the European Union (CJEU) regarding

the likelihood of consumers’ confusion in respect of

online advertising campaigns. The paper additionally

discusses the negative consequences of broadening

the concept of taking unfair advantage and separation

of this concept from likelihood of confusion or a

likelihood of detriment to the distinctive character

or the reputation of the trademark. Finally, it focuses

on the possibility of introducing licensing models,

which would potentially strike the right balance

between conicting interests of the trademark

holders, advertisers and consumers.

2 Everyone who uses search engines knows that after

typing a particular word the web browser engine

displays two types of results. The rst of them,

which also takes up the most space on the website

are links to websites, which are “natural” results of

the search, i.e. websites indexed by web browsers as

the most closely connected with the keyword (the

so-called “organic” results). The order in which

links are displayed is subject to complex algorithms,

which takes into account a number of factors;

in particular the number of views and amount of

websites referring to specic keyword. The more

frequently the website is visited, the higher it will

be displayed within the organic results of the search,

thus it would mimic an Internet user’s natural search

behaviour.1 It is worth noting that usually web

browsers strictly protect the structure of algorithms

and modify them to prevent the algorithm from

potential manipulations by advertisers. It should

also be emphasised that advertisers have no legal

way to affect the order of the organic results of the

search.2

1 Tan A. 2010. Google Adwords: Trademark infringer or trade

liberalizer, 16 Mich. Telecomm. & Tech. L. rev., p. 477.

2 Dupont J.S. 2013. Uncharted territories of trade mark use,