| A key risk for an intellectual property owner is an | | | | 2) It may be more difficult to police advertising of |
| infringement action and a challenge to the validity | | | | counterfeit products. |
| of the intellectual property rights. For the alleged | | | | However, there are still things that brand owners |
| infringer, a validity attack is often the first line of | | | | can do. For example, refer to and make use of |
| defence. | | | | (from 2011) the increased ASA powers (Asa will |
| As you know, Google's AdWords service allows | | | | have new powers to regulate websites) which will |
| you to purchase a registered trademark of | | | | extend to advertising online and on advertisers |
| another company (even a competitor) as an | | | | websites. Register a logo in addition to a word |
| advertising keyword in order to improve the | | | | mark as a trademark for added protection. Make |
| ranking of your own website. A number of | | | | appropriate use of copyright and design right |
| companies (owners of a trademark which were | | | | notices, seek protection under confidentiality laws |
| used by Google as AdWords keywords) took | | | | (where applicable). |
| exception to this practice and challenged Google | | | | Brand owners seeking to enforce and protect |
| for infringement of their trademarks. | | | | their trademarks should also be aware of the |
| The dispute went up to the European Court of | | | | remedies available to them in all circumstances, |
| Justice which as explained in my previous article | | | | including: |
| (Google AdWords: an advertisers friend or foe) | | | | * Considering the possibility of reputation-based |
| allowed this use provided that certain conditions | | | | infringement for both major and secondary |
| were met. | | | | brands. |
| Following this, Google has announced that from | | | | * Keeping records of analysis of brand recognition |
| the 14th of September 2010, it will be revising its | | | | and considering their potential worth (and potential |
| AdWords policy to allow the use of trademarks | | | | to cause damage) in infringement proceedings |
| by advertisers. The use of other business | | | | showing: |
| trademarks will be allowed in the EU and EFTA as | | | | - detriment (reduced willingness to buy); |
| keywords and in the UK, Canada and Ireland into | | | | - unfair advantage (increased willingness to buy); |
| the advertisement itself, prevent brand owners | | | | and/or |
| from the possibility of complaining for unauthorised | | | | - impact on the ability of a mark to convey |
| use of their trademarks by other businesses | | | | various messages. |
| (even competitors). | | | | * Take special care when creating surveys in the |
| Use of trademarks as keywords: The instances | | | | context of infringement proceedings and, in |
| where businesses will be able to complain is where | | | | particular, bear in mind that all surveys (not just |
| they feel that the advertisement confuses the | | | | those that are relied on) will be disclosable. |
| audience about the origin of the advertised goods | | | | * Keep contact details for potential consumer |
| and services. In this case the businesses will be | | | | witnesses (including customer complaints) who can |
| able to use Google's online complain procedure | | | | speak about confusion or a change in shopping |
| following which if Google deems that the text is | | | | habits (for example, change in economic behaviour |
| confusing it will be able to remove the particular | | | | or willingness to buy). |
| advertisement. | | | | * Be on the look out for evidence of the |
| Use of trademarks in the text of the | | | | intentions of an infringer. |
| advertisement: in order for this to be allowed, | | | | * In comparative advertising, take care that any |
| 1) the trademark must be used in a generic or | | | | data relied on can be supported and meets the |
| descriptive way and not to indicate the trademark | | | | conditions under the Comparative Advertising |
| owner of the related goods or services; | | | | Directive (2006/114/EC). |
| 2) the advertiser must sell the goods or services | | | | * Be aware of the ability to play around with |
| corresponding to the trademark; | | | | others' marks (and the limits on this) in |
| 3) the advertiser must sell replacement parts, | | | | comparative advertising. |
| components or compatible products; or | | | | * Watch for references to imitations or replicas: it |
| 4) the advertiser must provide information about | | | | may be that action is available where it was not |
| the goods or services whose trademarks are | | | | previously. |
| used, but not in a negative way. | | | | This article is for general purposes and guidance |
| What does this mean for brand owners? | | | | only and does not constitute legal or professional |
| 1) Brand owners will need to keep an eye on the | | | | advice. |
| use of their trademarks in the marketplace | | | | Copyright 2010 Anassutzi & Co Limited. All rights |
| including Google and will must ensure that, the | | | | reserved. Information may be shared or |
| generic use refer to above, does not dilute the | | | | reproduced only if accompanied by the author's |
| trademarks causing it to lose its distinctiveness. | | | | name and bio. |