Internet Newsletter for Lawyers
September/October 2005, by Delia Venables

The relationship between website optimisation and trade mark infringement is still an academic debate and has yet to be fully tackled by the courts in the UK.

Business on the internet heavily relies on search facilities. Arguably proficient website optimisation though search facilities is as good as a 2 minute TV ad on a Saturday night! Competitors are desperate to ensure that internet users who are dependent on search facilities can easily search, locate and obtain information about their company. Trade mark owners will therefore exploit their statutory rights in attempting to ‘monopolise’ particular key words used for search terms for website optimisation.

Many search engine providers (SEPs) have seen the market opportunities here and have therefore taken it upon themselves to make revenue from selling these keywords. Google offers its ‘Adwords’ service whereby companies or in fact individuals can select a range of keywords or phrases irrespective of whether these words are protected by registered trade marks. Individuals pay search engine providers, like Google, for its particular advertising link to appear every time a particular search term is used. The user is totally unaware of the keyword selected but is presented with the ‘Banner’ advertisement. With so much money going into SEPs pockets one has to ask to what extent their liability for trade mark infringement is.

Let’s start by distinguishing the activities of the competitors and the SEPs. Of course it is the ‘third party competitor’ which ‘purchases’ the sponsored term from the SEP. The competitor can secure its own brand name but may also wish to secure a search term which is reflective of another’s registered or unregistered trade mark.

On the other hand the SEP has the responsibility to make available and sell banner advertising for exploitation. This will of course mean that it is also offering ‘protected’ search terms to those who have little or no interest in the term other than to exploit the goodwill vested in another’s brand. The responsibility that a SEP has with regards to keywords can be distinguished from meta tag abuse where the search engine provider has very little control.

Law in the UK

The difficulty will be to establish that there exists a likelihood of confusion on the part of the public. This was dealt with in the Court of Appeal case Reed Executive PLC v Reed Business Information Limited [2004] RPC 40 which dealt with use of hidden metatags/keywords for website optimisation by competitors (rather than search engine providers). Although obiter, the court did question whether such ‘use’ could relate to ‘use’ for trade mark infringement purposes. More clarity is therefore needed on this point.

Although we have some guidance as to ‘meta tag abuse’ in the Reed case there is little or no jurisprudence on an SEPs liability with regards to keyword trade mark infringement. Perhaps one could boldly suggest that an SEP could not directly infringe a third party’s trade mark. Firstly the SEP is not responsible for the selection or subsequent use of another’s trade mark within any given banner advertisement. This solely rests with the competitor who is applying for the banner. It would take an imaginative judge to find that SEP’s are using a trade mark in a trade marks sense (and I think he will be stepping down shortly!)

With any new legal matter, one must seek guidance from its jurisprudence. It is now well established that the essential function of a trade mark is to indicate the origin of the goods or services to which it is applied. It guarantees origin to the average consumer within the marketplace. So how does this apply to something which the consumer does not see?

In my opinion, the courts within the UK will follow a similar line of thought as the Reed case in that the ‘keyword’ (rather than the advertisement) never really comes to the attention of the consumer but is something that is automated through computer search systems. Does such use interfere with the guarantee function? Probably not!

Do search results lead to a likelihood of confusion? Taking into consideration the common doctrine of a global assessment of a given case, the average consumer is unlikely to be confused into believing that the search results/advertising banner produced by reference to a particular trade mark, will solely identify the trade mark owner or that the websites are economically connected. Perhaps trade mark owners should push for s.10 (1) infringement (identical mark against identical products) where likelihood of confusion is not required.

In fact Lord Justice Jacob in the Reed case held:

“The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results, results with much rubbish thrown in”.

Perhaps the following questions need to be asked:

• Question 1: In establishing the SEP’s role in hidden keywords, can displaying banner results amount to ‘use’ as in trade mark ‘use’; and

• Question 2: Whether using keywords to provide links to third party goods amounts to ‘relevant use’ in relation to the goods or services for the purposes of trade mark infringement.

It is likely that if this matter is before a UK court in the near future, that such questions will be referred to the European Court of Justice for guidance.

Alternatively, SEPs may be found in join tortfeasorship with the primary infringer. Guidance can be taken from the Court of Appeal case in MCA Records Inc v. Charly Records Limited and Ors [2002] EMLR1; [2002] FSR 26 where to be successful in an infringement claim, the claimant must show that the SEP has acted in common design with the infringer by inducing, directing or inciting the said infringement. To be successful here evidence would be required to show that the SEP did more than facilitate but in fact was actively involved in the infringement.

What can be taken from other countries?

Surprisingly the French Court, Tribunal de Grande Instance de Nanterre held that such use was an infringement of the Claimants’ trade marks. The Court held that the marks, La Bourse des Vols and La Bourse des Voyages were distinctive with regards to the goods/services applied.

Google thus sold common words to the Claimants’ competitors, yet given the distinctive nature of the marks, and the use made thereof by the Claimants, Google was prohibited from doing so under Art.L.713-2 of the Code of Intellectual Property.

Google was required to pay the Claimants 12870 Euros in damages for unlawful use of their trade marks. An important point here is that the French courts are required to interpret ‘harmonised’ trade mark law imposed upon by the Trade Marks Directive 89/104. Arguably the UK may take a similar approach.

The American courts have taken a similar approach. A US district court has recently ruled against Google in Government Employees Insurance Company v. Google Inc. This case again concerned Google Keyword service ‘AdWords’. The action was brought over use of the words ‘Geico’ and ‘Geico Direct’ as keywords by a third party. In this case the judge found that there was indeed a trade mark infringement where the terms were used for sponsored ads.

GEICO a car insurance company sued Google and Overture (a subsidiary of Yahoo!) over the selling of its trade mark as a sponsored term. Overture settled out of court; however Google fought to the end - and lost. However Google won a summary judgement concerning the sale of the keyword but as regards the question whether Google’s use of the text in a sponsored ad was an infringement, the Judge answered:

“GEICO had established a likelihood of confusion” and that there had in fact been a breach of the Claimant’s trade mark rights “solely with regard to the sponsored links that use GEICO’s trade marks in their heading or text.”

This case has been stayed in the hope that the matter can be settled out of court. If it doesn’t the court will need to consider whether Google is liable or its advertisers. Of course all eyes will be on this case over the coming months.

Liability for SEPs will remain an academic debate in the UK until it is fully dealt with by the UK courts or in Europe. With little guidance, trade mark owners are discouraged from disputing the infringement in the court with little precedent. However, the case for joint tortfeasorship is certainly more encouraging. And as for trade mark dilution… well that’s a different story for a different day.

Daniel is a trainee solicitor advocate at Lawdit Solicitors, www.lawdit.co.uk. He advises and acts for clients in respect of commercial litigation on all areas of intellectual property. Daniel is also a lecturer in intellectual property law, Patent law and Media law at Southampton Solent University.

Email daniel.doherty@lawdit.co.uk.

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