|
A key risk for an intellectual property owner is an infringement action and a challenge to the validity of his intellectual property rights. For the alleged infringer, a validity attack (i.e. an attack that the intellectual property is not valid) is often the first line of defence. Potentially the same approach was used also when third parties used trademarks of other owners as keywords in online advertising without authorisation from the trademark owners. As you know, Google's AdWords service allows you to purchase other companies (even competitors) registered trademarks as advertising keywords in order to improve the ranking of your own website. A number of companies (owners of trademarks which were used by Google as AdWords keywords) took exception to this practice and challenged Google for infringement of their trademarks. The dispute went up to the European Court of Justice which as explained in my previous article allowed this use provided that certain conditions were met. Following this, Google has announced that from the 14th of September 2010, it will be revising its Adwords policy to allow the use of trademarks by advertisers. The use of other business trademarks will be allowed in the EU and EFTA as keywords and in the UK, Canada and Ireland into the advertisement itself, prevent brand owners from the possibility of complaining for unauthorised use of their trademarks by other businesses (even competitors). Use of trademarks as keywords: The instances where businesses will be able to complain is where they feel that the advertisement confuses the audience about the origin of the advertised goods and services. In this case the businesses will be able to use Google’s online complain procedure following which if Google deems that the text is confusing it will be able to remove the particular advertisement. Use of trademarks in the text of the advertisement: in order for this to be allowed, 1) the trademark must be used in a generic or descriptive way and not to indicate the trademark owner of the related goods or services; 2) the advertiser must sell the goods or services corresponding to the trademark; 3) the advertiser must sell replacement parts, components or compatible products; or 4) the advertiser must provide information about the goods or services whose trademarks are used, but not in a negative way. What does this mean for brand owners? 1) Brand owners will need to keep an eye on the use of their trademarks in the marketplace including Google and will must ensure that, the generic use refer to above, does not dilute the trademarks causing it to lose its distinctiveness. 2) It may be more difficult to police advertising of counterfeit products. However, there are still things that brand owners can do. For example, refer to and make use of (from 2011) the increased ASA powers which will extend to advertising online and on advertisers websites. Register a logo in addition to a word mark as a trademark for added protection. Make appropriate use of copyright and design right notices, seek protection under confidentiality laws (where applicable). Brand owners seeking to enforce and protect their trademarks should also be aware of the remedies available to them in all circumstances, including: Considering the possibility of reputation-based infringement for both major and secondary brands. Keeping records of analysis of brand recognition and considering their potential worth (and potential to cause damage) in infringement proceedings showing: detriment (reduced willingness to buy); unfair advantage (increased willingness to buy); and/or impact on the ability of a mark to convey various messages.
Take special care when creating surveys in the context of infringement proceedings and, in particular, bear in mind that all surveys (not just those that are relied on) will be disclosable. Keep contact details for potential consumer witnesses (including customer complaints) who can speak about confusion or a change in shopping habits (for example, change in economic behaviour or willingness to buy). Be on the look out for evidence of the intentions of an infringer. In comparative advertising, take care that any data relied on can be supported and meets the conditions under the Comparative Advertising Directive (2006/114/EC). Be aware of the ability to play around with others’ marks (and the limits on this) in comparative advertising. - Watch for references to imitations or replicas: it may be that action is available where it was not previously.
This article is for general purposes and guidance only and does not constitute legal or professional advice. Copyright 2010 Anassutzi & Co Limited. All rights reserved. Information may be shared or reproduced only if accompanied by the author’s name and bio.
|
Articles 
