Related to Google AdWords which, for those of you who are unfamiliar, is a system which allows people to purchase certain terms (called ‘keywords’). When that keyword is searched, the purchaser’s advertisement will be displayed at the top of the results page. I was asked whether someone could purchase a trade marked term as a keyword.
Could Coca-Cola purchase the word ‘Pepsi’ (bearing in mind the keyword itself doesn’t have to appear in the actual ad)? It is an odd situation because it does involve using someone else’s trade marked term to direct consumers to your product.
Trade mark infringement generally requires either:
- Consumer confusion because of your use of the trade mark; or
- That you damage/take unfair advantage of the trade mark owner reputation.
However, use of a trade marked term as a keyword will not necessarily do either of these things. It’s not like putting Coke in a Pepsi can, which would obviously lead consumers to believe they are buying Pepsi. It’s more like going to the shop to buy Pepsi and finding Coke instead; it does not confuse you (hopefully), but simply shows you an alternative.
Similarly, presenting your product as an alternative to another isn’t likely to be seen as damaging or taking unfair advantage of the reputation in another trade mark.
On the whole, case law has tended to take the view that simply using a trade marked term as a keyword will not infringe the mark, but note that the particular facts of each case are critical.
In Interflora v Marks & Spencer the court found that M&S did infringe Interflora’s trade mark by using the term as a keyword. This was based on the fact that the adverts displayed by M&S when the term ‘Interflora’ was searched did not enable the reasonably well informed and reasonably observant internet user to ascertain whether the goods originated from Interflora – many users in fact believed (incorrectly) that M&S’s flower delivery service was part of Interflora’s network.
The decision in Interflora v Marks and Spencer highlights that use of trade marked terms as keywords can result in trade mark infringement where there is scope for confusion as to the origin of the goods. However, actions brought for trade mark infringement depend on the knowledge of the reasonably well informed and reasonably observant internet user.
The idea of the reasonably well informed/observant internet user will change as people become more familiar with how keyword advertising works, and it will only become more difficult to pursue infringement claims on these grounds.
Related articles :
Lush v Amazon: Trade mark infringement by keyword advertising