At face value, it may appear that purchasing keywords relating to a competitor’s brand, and incorporating these into your own online marketing campaign, is an easy way to grow your business. In effect, someone else’s established reputation is being ‘shared’. Clearly, that competitor will not be intending anyone else to profit from their endeavours.
A recent decision of the High Court of England and Wales confirms that use of a registered trademark in keyword advertising, will constitute trademark infringement if there exists a likelihood of confusion, and the advertisement does not guide the average internet user towards distinguishing between the two undertakings.
Will use of a trade mark as a keyword constitute infringement?
The facts:
Marks and Spencer’s (M&S) began purchasing and using the keyword “Interflora” as part of their online marketing strategy, as early as 2008. Having purchased the keywords, M&S were able to advertise their own flower delivery services on top of the search results returned for “Interflora”.
Interflora brought an action against M&S on the grounds that use of their trademark “Interflora” constituted trademark infringement, in the UK.
The Court, ruling in favour of Interflora, found M&S guilty of trademark infringement. It was held that the average consumer, who is a “reasonably well-informed and observant internet user”, was unable to distinguish between the two undertakings, and the flower delivery services that were being offered. As a consequence, the trademark owner (Interflora) had suffered considerable distress and damage. It was deemed that the adword campaign being run by M&S was likely to deceive the average consumer, whilst taking business away from the legitimate brand owner.
The implications for brand owners:
This decision has led to discussions on how companies can legally purchase and use trademarks as keywords, to enhance the effectiveness of search engine results. In this instance, whilst use of trademark in keyword remains perfectly legal, there is a risk of trademark infringement if it is used in any way likely ‘to imply an association’.
Following this decision, we would advise marketing departments and brand owners to be much more cautious when using a competitor’s trademark as a keyword. In order to avoid any confusion, keyword advertisers should consider the text they use in their advertisements, so that it avoids any suggestion of an association. The alternative is to avoid the use of brand names beyond your control, and to make use of descriptive terms only.
Despite the concerns raised, the recent decision remains limited to its facts and is therefore unlikely to apply to all business contexts and all keyword advertisements. In particular, the Court took into account the size of the two business organisations in suit, and the relevance of Interflora’s association with a number of other retailers. The implication the Court drew from the latter, was that it was entirely plausible that there could be a relationship between them and M&S, or indeed any other company. It was not expected that the average consumer would dwell on this to decide for themselves whether there was association or not.
In addition, the Court took into account the general lack of attention and awareness paid by the average consumer to internet search results. They were deemed unable to distinguish between sponsored links and the ‘unsolicited’ search results that were revealed to them. This last aspect of the High Court decision shows only too clearly how quickly case law will need to evolve to take account of the rapidly changing online world, and the understanding of the ‘average consumer’.
In light of the above, whilst the decision holds current and critical value from a trademarks perspective, we do not expect to see the use of keyword advertisements being severely restricted as its perceived value as a marketing tool will not be given up lightly. That said, we do anticipate and recommend a cautious approach being deployed by marketing departments and brand owners, the possibilities of ‘association’ must be borne in mind, and avoided. This is perhaps particularly so when purchasing the trademarks of companies who are in control of vast networks, franchises or licensed operations, as here there will be deemed to be a greater scope for confusion, and for the facts of the Interflora decision being replicated.
If you are concerned by keyword advertising in the UK and Europe…..Why not contact the team and Albright IP and let us help you.
The experienced team at Albright IP will be able to offer advice in all areas of trademark law and practice, including use of a trademark as a keyword from both an advertising and enforcement position.
