Feeds

Brand owners could stop reputation-benefitting keyword triggers

No vicarious benefits, suggests ECJ advisor

Combat fraud and increase customer satisfaction

Owners of trade marks with a reputation could stop other companies using their brands as triggers for Google adverts if the use is an attempt to benefit from the reputation of that brand, an advisor to the European Court of Justice (ECJ) has said.

ECJ Advocate General Niilo Jääskinen has published an opinion on a High Court dispute between Interflora and Marks and Spencer (M&S) over whether M&S can use the term 'Interflora' to trigger adverts in Google search results.

Jääskinen has advised the ECJ that the extra protection offered to trade marks with a reputation should apply in keyword disputes.

If that reputation-carrying trade mark is used as a keyword by rival companies it will break trade mark law if "the advertiser attempts thereby to benefit from its power of attraction, its reputation or its prestige, and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark," he said in the opinion.

Advocate General opinions are not binding on the ECJ but are intended to advise judges. They are followed in the majority of cases.

Jääskinen said that the extra protection offered to trade marks with a reputation protects them against the blurring of that reputation; a tarnishment of it, or the free riding on it by competitors.

Though Jääskinen outlined an expanded area in which trade mark owners could take successful actions, he said that in this case Interflora was unlikely to succeed in arguing that M&S's use of its term as a trigger was an unlawful blurring of, tarnishment of or free riding on its trade mark.

M&S used the term 'Interflora' to trigger its own ads but did not use the term in the text of the ad.

"I do not think that dilution of a trade mark, i.e. weakening of its meaning as denoting goods or services of a specific abstract commercial origin, could legally be seen as resulting from advertising where the trade mark is not mentioned," said the opinion.

He also said that the case was not about tarnishment, and that M&S's behaviour was not free riding.

"The question of free-riding has to be analysed on the basis of the ad shown in the sponsored link," said the opinion. "If that ad mentions or displays the trade mark, the acceptability of the use depends on whether we are faced with legitimate comparative advertising or, on the contrary, with riding on the coat-tails of the trade mark proprietor."

"In its ads Marks & Spencer is neither comparing its goods and services with those of Interflora (‘our goods and services are better/cheaper than those by Interflora’) nor presenting its goods as imitations or copies (‘… we are offering an Interflora type of service’) or even expressly presenting them as alternatives (‘Are you an Interflora customer? Why not try this time Marks & Spencer?’) to them," said Jääskinen.

"Yet the choice of keywords in search engine advertising by Marks & Spencer implies a marketing message that they offer an alternative to Interflora. However, in my opinion this does not amount to free-riding," he said.

The Advocate General said that the Court should rule, as it had in a previous case, that all trade marks, whether they have a reputation or not, can be used as keyword triggers unless that use "does not enable an average internet user, or enables the said user only with difficulty, to ascertain whether the goods or services referred to in the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or from a third party".

The opinion did say, though, that Interflora would be likely to stop M&S from using the keyword because its trade-marked name is unique, and because it is a network of shops. That could lead to consumer confusion, it said.

Trade mark owners should not be able to stop the use of generic or general terms, but where the trade mark is a unique word the trade mark holder has more rights, the opinion said.

The fact that Interflora operates a network of shops added the potential for more than usual amounts of consumer confusion, Jääskinen said. That also would give Interflora more control over the use of its trade mark than might otherwise be the case.

"An error concerning the origin of goods or services arises when the competitor’s sponsored link is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor’s commercial network when it is not," he said. "As a result of this the trade mark proprietor has the right to prohibit the use of the keyword in advertising by the competitor in question."

See: the opinion

Copyright © 2011, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

SANS - Survey on application security programs

More from The Register

next story
EU: Let's cost financial traders $400m a day, because EVIL BANKERS. Right?
Wait 'til this one hits your pension fund where it hurts
Systems meltdown plunges US immigration courts into pen-and-paper stone age
Massive outage could last four weeks, sources claim
RIP net neutrality? FCC boss mulls 'two-speed internet'
Financial fast track to replace level competitive playing field, report claims
Lavabit loses contempt of court appeal over protecting Snowden, customers
Judges rule complaints about government power are too little, too late
UK.gov chucks £28m at F1 tech for buses and diggers plan
Well, not really F1 but who's heard of LMP and VLN*?
Don't let no-hire pact suit witnesses call Steve Jobs a bullyboy, plead Apple and Google
'Irrelevant' character evidence should be excluded – lawyers
Record labels sue Pandora over vintage song royalties
Companies want payout on recordings made before 1972
Edward Snowden on his Putin TV appearance: 'Why all the criticism?'
Denies Q&A cameo was meant to slam US, big-up Russia
Ex-Tony Blair adviser is new top boss at UK spy-hive GCHQ
Robert Hannigan to replace Sir Iain Lobban in the autumn
prev story

Whitepapers

Securing web applications made simple and scalable
In this whitepaper learn how automated security testing can provide a simple and scalable way to protect your web applications.
3 Big data security analytics techniques
Applying these Big Data security analytics techniques can help you make your business safer by detecting attacks early, before significant damage is done.
The benefits of software based PBX
Why you should break free from your proprietary PBX and how to leverage your existing server hardware.
Mainstay ROI - Does application security pay?
In this whitepaper learn how you and your enterprise might benefit from better software security.
Combat fraud and increase customer satisfaction
Based on their experience using HP ArcSight Enterprise Security Manager for IT security operations, Finansbank moved to HP ArcSight ESM for fraud management.