Keyword Trademark Infringement - A Country wise Analysis
A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. Trademarks typically protect brand names and logos used on goods and services. A trademark is a distinctive sign or indicator used by an individual, business organization, or 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 company’s 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 Playboy’s contention that, by keying ads for competing adult-oriented sites to its trademarks PLAYBOY and PLAYMATE, users searching under Playboy’s 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 Playboy’s pages online. The court readily agreed that even if users realize “immediately upon accessing” the competitor’s site that they have reached a site “wholly unrelated to” Playboy’s, 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 Appellant’s Trademark Infringement and Dilution claims. It reversed the District Court’s 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.
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 advertiser’s website in the search engine provider’s 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 provider’s 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 provider’s 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.
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 Primakabin’s ad because they had made minor spelling mistakes in typing the word ‘portakabin’. Originally, the heading of Primakabin’s 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 person’s 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.
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.
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 plaintiff’s 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 mark’s ability to indicate origin of the goods and services or one of the mark’s 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.
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), rev’d, 354 F.3d 1020 (9th Cir. 2004)
# Jonathan Moskin, Virtual Trademark Use — The Parallel World of Keyword Ads
#  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.
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