We spend a lot of time advising companies on domain name disputes and keyword issues.

The common refrain is as follows. Surely it cannot be legitimate for google and other search companies to sell established trademarks, especially if registered, as keywords to competitors of the brand owner in order to enable diversion of business from the legitimate owner to scurrilous competitors.

There have been various cases in various jurisdictions and there is not complete consistency or certainty but the general position would seem to be as follows:-

  • it is legal for a search engine to sell keywords reflecting a brand to the brand's competitors - in doing so it can invoke its status as a mere hosting intermediary and also that it is not itself using the mark in a way which contravenes trademark legislation
  • if the search engine knows that unfair advantage of a trademark is being taken, it may itself become jointly liable
  • if the trademark is used as a keyword to promote the competitor in the search engine rankings but the mark does not actually appear in the competitor's thumbnail wording in the search engine results, the trademark owner's chances of succcessfully suing its competitor are reduced
  • competitors purchasing such keywords may themselves be liable for trademark infringement especially where the trademark is registered and their thumbnail wording in the search results includes the actual trademark
  • following a recent European ruling, Google announced alignment of its UK, European and US policies, namely that advertisers in most parts of Europe will be able to link advertisements to trademarks but that Google will operate a Notice and Take-Down procedure so that it can use its discretion in determining whether to respond to complaints by a trademark owner by removing the "offensive" advertisement.  

This is an area of the law in flux and the case-law to date has not been consistent. If you have an issue involving keyword use you should take expert legal advice to assess your position.