There have been some new developments on how trademark law will treat selling a trademark as a keyword for directed search vs. how the law will punish those who use a trademark in a domain name for direct search.
Last week Google announced it will begin selling trademarked terms to advertisers as keywords in Europe. According to an article by Philip Corwin on CircleID.com, the new policy, which takes effect September 14th, brings Google’s EU policy in line with what it already does in most other parts of the planet, including the U.S. and U.K.
Prior to the announcement, trademark owners could prevent Google from publishing ads placed by companies that did not own the trademark keyword.
Google’s policy shift was triggered by a European Court of Justice (ECJ) decision rendered in March, in which it ruled against a lawsuit brought by LMVH Louis Vuitton Moet Hennessy and other brand owners. Google’s new policy still bars advertisers from using the trademarks of others in the text of their ads—but that too may change down the road, as Google already allows resellers of branded products or sellers of compatible parts for a branded product to use others’ trademarks in their U.K and Irish ads.
This decision is in line with recent U.S. case law, in which Google continues to successfully defend its sale of trademarks to companies without ownership.
Other landmark cases have sought to clarify and reemphasize the existing ban on the advertising of counterfeit goods. In April a decision by the Second Circuit Court of Appeals in Tiffany v. eBay affirmed most of a landmark 2008 District Court opinion and held that eBay had no direct, secondary, or trademark dilution liability notwithstanding its general knowledge that many sellers of “Tiffany” goods on its online auction website are selling counterfeit goods.
The Court explained, “An online advertiser such as eBay need not cease its advertisements for a kind of goods only because it knows that not all of those goods are authentic. A disclaimer might suffice. But the law prohibits an advertisement that implies that all of the goods offered on a defendant’s website are genuine when in fact, as here, a sizeable proportion of them are not.”
CircleID sides with Google and the rulings in both cases. Corwin writes, “Consumers clearly suffer substantial harm when they purchase a good they believe to be genuine and it turns out to be a fake. To the contrary, regardless of which search methodology they employ, when they type in a trademark and receive back some ads and links to legitimate trademarked goods and services, as well as those of competitors, they and society receive a net benefit from the additional information and market competition that results.”
These decisions depict the growing trend, already present here and now gaining a voice abroad, is to block trademark owners who attempt to inhibit competition by suing those who use their trademark keywords in triggered advertising.
What’s more, Corwin writes, “They also illustrate that evolving trademark law for online commerce is generally moving further away from the hard-and-fast doctrines embodied in the UDRP and national laws like the ACPA. That’s not surprising, since those doctrines embody the thinking of the late 1990’s—practically a prehistoric era in relation to e-commerce methodologies and technologies as well as online consumer sophistication.”