Following recent judgments from the European Court of Justice (ECJ), the law relating to the use of trade marks as keywords has been clarified.
In summary, these changes may make it slightly easier to register trade marks as keywords with Google and other search engine providers. However, care must still be taken by the advertiser to ensure such use complies with the law and does not confuse the public as to the origin of advertised goods and services.
Keywords are terms (such as 'hotels' or 'hotels in London') that can be purchased by companies as an advertising tool, so that a link to the company's website will appear when that term is searched.
Naturally, it is tempting for a company to purchase a leading brand owner's trade mark as a keyword for maximum 'hits' which will then direct web traffic to the advertising company's site. This use of other companies' trade marks for keyword advertising purposes has given rise to the disputes referred to below.
Recent case law
In the recent case of Google France SARL v Louis Vuitton Malletier (C-236/08), the ECJ held that Google was not liable for trade mark infringement carried out by a company using its AdWords service because Google itself was not 'using' the trade mark.
In the case of Portakabin Limited and Portakabin BV v Primakabin BV (C-558/08), the ECJ held that it was not necessarily an infringement by a company to purchase a third party trade mark for use as a keyword so long as the resulting advert shown did not 'confuse users about the origin of the advertised goods and services'.
These cases may arguably have an adverse effect on brand owners. Trade mark owners may wish to protect themselves by ensuring they police the internet for any confusing use of their trade marks so that, where appropriate, an objection may be made to Google (or the relevant search engine provider) or other legal action taken.
Those using third party trade marks as keywords should still take care to ensure that, where they do so, they fall clearly within the search engine's policy guidelines, they do not confuse internet users about the origin of advertised goods and services and they seek local legal advice as appropriate.