Articles and Publications
Googling
17/Jan/2006
Google was hailed as an advertising revolution when it crashed onto the Internet in the early 1990’s. Google is largely recognised as the world's largest search engine and has provided the advertiser with a cost effective way of reaching a worldwide platform – few can say they have not been guilty of "Googling" in their spare time.
In more recent times, Google has encountered legal problems concerning its key word advertising service.
The key word service allows an advertiser to purchase keywords specific to its site. When users enter these words into the search tool, a link to that advertiser’s site appears on the sponsored link page on the search results page. Google charges a fee every time someone clicks on the advertiser’s sponsored link. Advertisers have started to manipulate this service by purchasing competitors' brand names and slogans as their key words, causing their site to appear on the sponsored link page side by side with their, often more successful and in some cases brand leader, competitor – but what can be done about it?
Trademark Infringement
In October 2003, Google France was successfully sued for trademark infringement at a cost of €70,000 in damages. Two French travel agencies sued Google France when their advertising slogans were used as a key word search by a competitor, causing the users to be diverted to their competitor's website via their sponsored link. The court expressed the view that Google should have been more pro-active in monitoring trademark abuse and the use of key words. Google France subsequently appealed the decision but lost this in March 2005. Since this decision, Google and other search engine providers have had to face a raft of similar cases on similar grounds. It is therefore a very real possibility that using a competitor's brand name to improve success rates in Internet search engines could lead to an infringement action.
Infringing "use" of a trademark is defined broadly and includes:
* Attaching the mark to goods or packaging
* offering or exposing the goods for sale under the mark
* offering or supplying services under the mark
Arguably, using the mark as a key word is offering, exposing and supplying the goods or services under the mark and would therefore amount to infringement.
Similarly, where a trademark has not been registered, the common law action of passing off will be available to the competitor trademark owner where there is a likelihood of deception.
You can also take action directly against a competitor for passing off or trademark infringement in the same way as if they had used a metatag to achieve the same outcome. See the article "Intellectual Property and the Internet: Metatags" for more information.
Conclusion
Where you believe that a competitor is using your company's name or goodwill to give them a step up the search page ladder, then firstly you should consult the search engine's complaints procedure. These have been much improved following the series of case law brought against Google et al and the search engine providers are far more vigilant to potential infringers and are more willing to sanction them. The procedure is now a real alternative to using the courts, which can be costly and therefore inaccessible to the smaller business.
You can also take action against the infringer. See the article Intellectual Property and the Internet: Metatags.
And finally, a warning for any potential infringers – even if you are just thinking about using a competitor's name, slogan, gimmick or brand as a way of promoting your business then you are probably already on the rocky road to some form of infringement activity.
If you think that you are the victim of infringement activity on the Internet or if you think you may be infringing others, please contact one of our Technology or IP specialists on 0845 129 2300.
Other related articles: Intellectual Property and the Internet: Metatags.
Intellectual Property and the Internet: Domain Names and Cyber-squatting.
In more recent times, Google has encountered legal problems concerning its key word advertising service.
The key word service allows an advertiser to purchase keywords specific to its site. When users enter these words into the search tool, a link to that advertiser’s site appears on the sponsored link page on the search results page. Google charges a fee every time someone clicks on the advertiser’s sponsored link. Advertisers have started to manipulate this service by purchasing competitors' brand names and slogans as their key words, causing their site to appear on the sponsored link page side by side with their, often more successful and in some cases brand leader, competitor – but what can be done about it?
Trademark Infringement
In October 2003, Google France was successfully sued for trademark infringement at a cost of €70,000 in damages. Two French travel agencies sued Google France when their advertising slogans were used as a key word search by a competitor, causing the users to be diverted to their competitor's website via their sponsored link. The court expressed the view that Google should have been more pro-active in monitoring trademark abuse and the use of key words. Google France subsequently appealed the decision but lost this in March 2005. Since this decision, Google and other search engine providers have had to face a raft of similar cases on similar grounds. It is therefore a very real possibility that using a competitor's brand name to improve success rates in Internet search engines could lead to an infringement action.
Infringing "use" of a trademark is defined broadly and includes:
* Attaching the mark to goods or packaging
* offering or exposing the goods for sale under the mark
* offering or supplying services under the mark
Arguably, using the mark as a key word is offering, exposing and supplying the goods or services under the mark and would therefore amount to infringement.
Similarly, where a trademark has not been registered, the common law action of passing off will be available to the competitor trademark owner where there is a likelihood of deception.
You can also take action directly against a competitor for passing off or trademark infringement in the same way as if they had used a metatag to achieve the same outcome. See the article "Intellectual Property and the Internet: Metatags" for more information.
Conclusion
Where you believe that a competitor is using your company's name or goodwill to give them a step up the search page ladder, then firstly you should consult the search engine's complaints procedure. These have been much improved following the series of case law brought against Google et al and the search engine providers are far more vigilant to potential infringers and are more willing to sanction them. The procedure is now a real alternative to using the courts, which can be costly and therefore inaccessible to the smaller business.
You can also take action against the infringer. See the article Intellectual Property and the Internet: Metatags.
And finally, a warning for any potential infringers – even if you are just thinking about using a competitor's name, slogan, gimmick or brand as a way of promoting your business then you are probably already on the rocky road to some form of infringement activity.
If you think that you are the victim of infringement activity on the Internet or if you think you may be infringing others, please contact one of our Technology or IP specialists on 0845 129 2300.
Other related articles: Intellectual Property and the Internet: Metatags.
Intellectual Property and the Internet: Domain Names and Cyber-squatting.
