21/02/2011 in Brand Management, Intellectual Property, Advertising & Marketing, Technology & Digital, Trade Marks & Domains
Buoyed by recent successes in the European Court of Justice (“ECJ”), from 14 September 2010 Google has revised its trade mark policies in a number of important ways.
In Continental Europe, it has lifted restrictions on the ability of advertisers to pay for a sponsored link to be displayed when a competitor’s brand is entered into the Google search engine, bringing the region into line with the existing position in the UK, Ireland and US.
Advertisers will still not generally be permitted to use a third party trade mark in the text of their ad in Europe. However, an exception to this will apply in relation to the UK and Ireland where resellers of a branded product or service and retailers of compatible parts will be able to use the relevant brand names.
Google has been encouraged to make these changes by the ECJ decisions in Louis Vuitton v Google France and Portakabin v Primakabin in which the court ruled that Google’s AdWord system does not infringe brandowners’ rights.
But advertisers must still beware – the court warned that they may potentially infringe by using a trade mark as a keyword if the resulting ad leaves consumers uncertain as to the identity of the advertiser and its relationship to the trade mark owner. To avoid secondary liability in such circumstances, Google itself has announced that it will take down an ad in response to a complaint where the ad is likely to confuse users as to the origin of the advertised goods or services.
These changes bring Google closer to having a single global trade mark policy for its AdWords programme. But brandowners are unlikely to be grateful: the changes further entrench the cost of having to bid competitively for their own trade marks in search-marketing programmes around the world.
For more information please contact Dominic Farnsworth or your usual Lewis Silkin contact.