Keyword Trademark Infringement - A Countrywise Analysis

Source : http://www.
Author : shashankshekhar333
Published on : August 15, 2011

Keyword Trademark Infringement - A Country wise shashankshekhar333's

Analysis Profile and details
A trademark is a word, phrase, symbol, or design, or a Shashank Shekhar
combination thereof, that identifies and distinguishes the 5th Year Student -
source of the goods of one party from those of others. Amity Law
Trademarks typically protect brand names and logos used on School, Amity
goods and services. A trademark is a distinctive sign or University - Batch 2007
indicator used by an individual, business organization, or to 2012
other legal entity to identify that the products or services to
consumers with which the trademark appears originate from a
unique source, and to distinguish its products or services from those of other entities. The
essential function of a trademark is to exclusively identify the commercial source or origin
of products or services, such that a trademark indicates source or serves as a badge of
origin. Certain exclusive rights attach to a registered mark, which can be enforced by way
of an action for trademark infringement, while unregistered trademark rights may be
enforced pursuant to the common law tort of passing off.

In the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS),

which is currently the basic international law on Intellectual Property Rights, trademark
has been defined in Article 15(1) as follows :-

Any sign, or any combination of signs, capable of distinguishing the goods or services of
one undertaking from those of other undertakings, shall be capable of constituting a
trademark. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colours as well as any combination of such signs,
shall be eligible for registration as trademarks.

Infringement of a trademark basically means the use of the mark or a deceptively similar
mark, by a person other than the original owner of the mark, in the course of trade relating
to the same goods or services for which the original mark is or has been used. Trademarks
rights can be infringed in the real world as well as the cyberspace. Infringement can occur
over cyberspace by representation of the mark by some person other than the owner of the
mark in many ways. The Domain Name disputes are the most common in relation to online
trademark disputes. They relate to the use of domain names, by persons, which are exactly
the same as or similar to the trademarks of some other person. Apart from this, there are
quite a few other ways in which infringement can happen online. Cyber squatting is one of
them. It is also a type of domain name dispute but, in this, the cyber squatter registers a
domain name which is the trademark of another person, and then, he exhibits extortionate
conduct towards the original owner of the mark, like offering to sell the domain name for a
ransom, etc.. Similarly, there are other types of trademark infringements occurring online,
like reverse hijacking, hyperlinking on other web pages, malicious use of metatags in
websites, infringement through the use of keywords on search engines or keyword
trademark infringement.

Keyword Trademark Infringement

Keyword Trademark Infringement is a term given to a situation wherein a company holding
trademark rights alleges infringement thereof when the mark is used by other companies
(especially competitors) as keywords in online searches to promote their own goods or
services. This misleads customers to the wrong websites and if the latter company wants, it
can cause severe damage to the original companys reputation. So, as a result, the latter
company can also profit from the goodwill of the former.

To better understand the situation, the actual process of keyword advertising must be
understood first. Search Engines, like Google, Yahoo, etc. are available to users free of
charges. But, they do need some revenue to keep the business running. They get it by
selling advertising rights to specific search terms, or keyword, under arrangements known
as keyword buys. The keyword advertising generally takes place in the form of banners
or small graphic images or a separate section of search results labeled as sponsored links
or ads, etc.. This has become a very popular way of advertising. The banner or sponsored
results of the purchaser of the keyword appear in the search results when the purchased
keywords are searched through the seller search engine. For example, if a user wants to
look up some information regarding a camera, and he does not know the exact address of
the website where he will find it, then he would go to a search engine and search for certain
keywords. What he will get in return will be certain natural search results and also the
results having the links and ads of the purchaser of those keywords. Now is when the legal
part comes in. The main question that arises at this point is that whether this whole process,
of buying keywords of already registered trademarks and displaying them in search results,
constitutes infringement of the trademark of which the keyword is bought.

A plethora of cases have been filed and decided on the aforesaid issue. One of the first
cases on this was Playboy Enterprises, Inc. v. Netscape Communication. In this case, the
accused advertising was viewed in light of Playboys contention that, by keying ads for
competing adult-oriented sites to its trademarks PLAYBOY and PLAYMATE, users
searching under Playboys marks would be presented with unlabeled links to competing
sites and thus would be led, at least initially, to visit those sites believing they would find
Playboys pages online. The court readily agreed that even if users realize immediately
upon accessing the competitors site that they have reached a site wholly unrelated to
Playboys, the damage has been done. Through initial interest confusion, the competitor
will have gained a customer by appropriating the goodwill that Playboy has developed in its
mark. So, the 9th Circuit Court found that genuine issues of material facts exist as to the
Appellants Trademark Infringement and Dilution claims. It reversed the District Courts
decision and remanded the case for further proceedings. The court also held that
infringement only applied to those ad banners which contained no identification of source
as these were the only ones subject to consumer confusion.

Google AdWords
After the Playboy Enterprises Inc. case was decided in 2004, many more cases came up
which involved the issue of keyword trademark infringement. Many of these were related to
the Google AdWords scheme provided by Google, in which keywords are sold for a price.
Google Adwords sells keywords so that when these keywords are searched then the
websites of their owners would show in the sponsored links and advertisements. When a
company owns a trademark, and a competitor buys the corresponding keyword, then the
original company would come under the natural search result while the competitor would
come under the sponsored search result. These all appear close to each other and so, this
can cause confusion and mislead potential customers to wrong websites, thereby spoiling
the reputation of the owner company.

Some important questions arise here, regarding the Google AdWords process:-
1. Where a trader in certain goods or services (the advertiser) avails himself of the
possibility of submitting a keyword, to the provider of an internet search engine, which is
identical to a trade mark registered by another person (the proprietor) in respect of similar
goods or services, and searching the keyword gives a reference to the advertisers website
in the search engine providers list of search results, is the advertiser using or
infringing the registered trade mark?

2. Does it make a difference in that regard whether the reference is displayed:

a) in the ordinary list of webpages found; or
b) in an advertising section identified as such?

3. Does it make a difference in that regard

a) whether, even within the reference notification on the search engine providers webpage,
the advertiser is actually offering goods or services that are identical to the goods or
services covered by the registered trade mark; or
b) whether the advertiser is in fact offering goods or services which are identical to the
goods or services covered by the registered trade mark on a webpage of his own, which
internet users can access via a hyperlink in the reference on the search engine providers
webpage?

Keyword infringement in relation to Google, etc. has been dealt with by the courts of quite
a few countries of the world, like UK, France, Germany, Netherlands, India, et al.. The
views of the court can be analyzed country-wise to know the position in different countries.

Netherlands
The most important case of Keyword Infringement that has been seen in Netherlands is the
case of Portakabin v. Primakabin. It was decided by the ECJ in 2010. The facts were that
Portakabin and Primakabin offered their goods for sale on their respective websites. For the
AdWords referencing service, Primakabin chose the keywords portakabin, portacabin,
portokabin and portocabin. The last three variations were chosen in order to avoid a
situation in which internet users, performing a search for units manufactured by Portakabin,
might miss Primakabins ad because they had made minor spelling mistakes in typing the
word portakabin. Originally, the heading of Primakabins ad, which appeared once one of
the aforementioned words had been entered into the search engine, was new and used
units. Subsequently, that heading was amended by Primakabin to used portakabins.

Portakabin first brought an action against Primakabin before the voorzieningenrechter te

Amsterdam (judge hearing applications for interim relief in Amsterdam). Then, it appealed
to the Gerechtshof te Amsterdam (Amsterdam Regional Court of Appeal). After that, an
appeal was lodged with the Hoge Raad der Nederlanden (Supreme Court of the
Netherlands). Finally, the Supreme Court referred it to the ECJ. The ECJ then decided in
favour of Primakabin and held that :-

a specialist reseller of second-hand goods under another persons trade mark cannot be
prohibited from using that mark to advertise to the public its resale activities unless the
resale of those other goods risks seriously damaging the image which the proprietor has
succeeded in creating for its mark.

The situation in Netherlands still is much in favour of advertisements using keywords.

UK
In the United Kingdom too, there have been quite a few cases relating to Keyword
Trademark Infringement. One of the most important ones is the case of Victor Andrew
Wilson v Yahoo! UK Ltd and Overture Services Ltd.. In this case, Victor Wilson, the
owner of a London based catering business had sued Yahoo, after discovering that typing
Mr Spicy, a name that he registered as a Community Trade Mark, triggered sponsored links
for Sainsbury's supermarket. Yahoo asked for summary judgement, arguing that it had not
used plaintiff's trademark. He got the summary judgement. The court held that the trade
mark in this case was not used by anyone other than the browser who enters the phrase "Mr
Spicy" as a search query in the defendants' search engine. In particular, the trade mark was
not used by the defendants. The response of the defendants to the use of the trade mark by
the browser was not use of the trade mark by the defendants. That was enough to decide the
case in the defendants' favour. But the matter did not stop there. If, by some process of
reasoning, one were to hold that the search engine's response to the words used by the
browser was, itself, use by the defendants, it was not use of the mark "Mr Spicy". What,
instead, was being used was the English word "spicy" as it appears in that phrase.

This means that the UK courts have also been much in favour of the advertisers. But the
important point to note here is that the advertiser had used the word "spicy" as keyword, not
"Mr Spicy". So it is still possible that buying a keyword that matches another firm's trade
mark is unlawful in the UK.

USA
In various cases in the USA, principles have been laid down as to what constitutes
trademark infringement. To sum up the decisions on the issue, it can be said that in order to
prevail on a trademark infringement claim under 32(1) of the Lanham Act, 15 U.S.C.
1114(1)2, a plaintiff must establish that :-

1. it has a valid mark that is entitled to protection under the Lanham Act, and that
2. the defendant used the mark
3. in commerce
4. in connection with the sale . . . or advertising of goods or services, 15 U.S.C. 1114(1)
(a),
5. without the plaintiff's consent.

In a famous decision in the case of Merck & Co. Inc. v. Mediplan Health Consulting Inc. in
2006, the Court said that the use of the disputed keyword is not use of the mark in the
trademark sense; rather, this use is more like the product placement marketing strategy
employed in retail stores, where, for example, a drug store places its generic products
alongside similar national brand products to capitalize on the latter's name recognition. The
sponsored link marketing strategy is the electronic equivalent of such product placement in
a retail store.

In USA, the decisions have been more in favour of Google, et al. and the reasons generally
given by courts is the plaintiffs failure to bring enough evidence of violation of Lanham
Act.

Rest of Europe
In Europe, there have been quite a few cases between Louis Vuitton (LV) and Google, as
well as eBay. The European Court of Justice also decided on the issue. The Court said that
for Trademark infringement, 4 cumulative conditions must be demonstrated :-

1. the use must be in the course of trade

2. the use must be made without the consent of the Trademark owner
3. this use must relate to identical or similar products or services
4. the use must affect the functions of the mark
Even if one of the conditions above is not fulfilled, trademark infringement will be deemed
not to have occurred.

In one of the main cases between LV and Google, in France Supreme Court, it was
observed that Google is surely engaged in trade but, the use of keywords is not for its own
communication, and is for the communication of its customers. So, it was held that there is
no use in the course of trade. Also, Google must have been playing an active role to be
liable, while its role was purely technical and passive. It was also said that the advertiser
will be held liable for trademark infringement if the keyword affects the marks ability to
indicate origin of the goods and services or one of the marks functions such as advertising
function.

So, Google has limited liability in this, as it is merely a hosting provider. But, if the
trademark owner notifies Google about the infringing advertisements, and Google still does
not remove the infringing data or make it impossible to access, then Google becomes fully
liable.

Apart from this, there have been some cases on this issue in Germany and Netherlands but,
the decisions have mostly been in favour of the Search Engines.

India
In India, in the case of Consim Info and Google India, the facts in brief were that the
plaintiff had registered trademarks of Bharat Matrimony, Telegu Matrimony, etc.. The
defendants (Jeevan Sathi, et al.) had bought keywords of exactly the same or similar words.
So, the plaintiff brought an action of Trademark infringement through keywords.

But, the decision went in favour of Google as the disputed keywords (like Bharat, Telegu,
Matrimony, etc.) were descriptive and hence, were weak to be taken up as an issue.

As a conclusion, it can be said that the decisions in general have been somehow in favour of
the reference service providers, like Google. The cumulative conditions given by ECJ in the
case of Louis Vuitton and Google are the most reasonable ones for such cases regarding the
issue of trademark infringement and the liability of the reference service provider. In
addition to that, the advertiser should be fully liable for the damages caused, only if the use
of the keyword somehow prevents the trademark owner to promote their goods or services.
Otherwise, the advertiser should only be partially liable for infringement. The law on
keyword trademark infringement has to develop a lot more for courts to be able to decide
properly on related issues. The number of cases reaching the courts on this issue have
increased quite a bit in the last few years.
*********************************************
# Basic Facts about Trademarks United States Patent and Trademark Office
# Greg Miller & Dawn Maharaj Trademark Suits Pose Threat to Web Engine Searches,
LA Times, Feb. 11, 1999
# 55 F. Supp. 2d 1070, 1086-88 (C.D. Cal. 1999), revd, 354 F.3d 1020 (9th Cir. 2004)
# Jonathan Moskin, Virtual Trademark Use The Parallel World of Keyword Ads
# [2008] EWHC 361 (Ch)
# 431 F. Supp. 2d 425 (S.D.N.Y. 2006)
# Consim Info Pvt. Ltd. v. Google India Pvt. Ltd., People Interactive Pvt. Ltd., Jeevansathi
Internet Services, Times Business Solutions Ltd., and Google Inc.
The author can be reached at: shashankshekhar333@legalserviceindia.com