When trademark use is not a copyright breach

10:24am Tuesday 24th June 2008

IN only eight years, Google has become the webs most popular search engine. It has a diverse product range, but its still the AdWords service that provides its most significant revenue stream.

AdWords are the little text adverts that pop up to the right of your search results.

Containing a short title, two lines of description and a link to another website, they are triggered by your search query.

Google operates a procedure through which trademark owners can complain about the unauthorised use of trade marks in AdWord advertisements.

Google investigates and usually suspends the advertisement in question. The trademark term in dispute is also then blocked from further use in AdWords for the future.

If you want to use AdWords, you might use a competitors trademark term in the text of your advertisement, and make your own advert appear when a user taps in the name of a competitor as a search term. For example, enter the term Waterstones and an AdWord advert for WHSmith pops up.

Google still processes complaints relating to the use of trade marks in third party AdWord text, but no longer accepts complaints about keywords.

As of May 5, keywords that were previously the subject of a successful complaint have been unblocked. This has generated fury among some of the UKs biggest retailers.

Teletext has openly threatened other travel agents with litigation if it finds its name used as a keyword, although this hasnt deterred Co-op Travel and First Choice, who are evidently using the mark as part of a keyword trigger for their Adword adverts.

A consortium of brand owners was also reported as having discussed privately whether any action may be taken against Google. Its a murky area. To be an infringement, the trademark in question must be used as a sign. Those brand owners would have to establish first that an infringement had occurred and convince the courts that the keywords in question were a sign C even though they didnt appear in the adverts themselves.

There has been little litigation on this subject. Brand owners werent prevented from litigating before, they just chose not to, preferring to go direct to Google for quicker and cheaper results.

I come back to the core function of a trademark C that it should act as a guarantee to the consumer of the trade origin of the goods or services to which it is applied.

If you lived in London and wanted to buy electronics you might head to Tottenham Court Road where youd see all the biggest names side by side. I wonder whether WHSmiths advert next to the search results for Waterstones is really so different?

ö Matthew Rippon is a partner at BHP Law specialising in contentious and commercial intellectual property matters. Contact him on 01325-376524 or at matthewr@bhplaw.co.uk

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