Paid Keywords for someone else's brand
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For those who have not caught up on the cases or the technology, one
of the most controversial topics in IP at the moment is the invisible
use of another's brand to attract hits on an unrelated site. As the Trademark blog recently reported, the Eastern District of New York for example, has consistenly held that this is not trade mark infringement. Managing Intellectual Property Magazine also ran a feature article on the topic in the April 2007 issue.
Having posted some thoughts in the IP Thinktank blog, I found myself briefly discussing the issue with Jeremy Phillips of IPKat fame on 4 July 2007 in London and he suggested this scorecard, which is a brilliant idea. So please let me know your thoughts.
Copyright Wednesday, July 4, 2007 Duncan Bucknell
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The
problem is that use of the brand in such a way, which is invisible to
people, is not deemed by some courts to be 'use in commerce', or put
another way, it is not 'use as a trade mark', notwithstanding that a
commercial benefit is derived. The issue is that use of a trade mark
is currently tied to a person recognizing it (whether visually, by
scent, shape, etc) and reacting to that recognition. With keyword ads
etc, the computer undertakes the recognition step and presents the
results to the consumer who may assume that those results are
associated with the brand.
And the strategic response?
For
brand owners on the receiving end of such strategies, you should
consider gathering evidence of actual deception of customers using the
search engine and, depending on the jurisdiction, you may wish to add
anti-trust / anti-competition law suits as part of your response. For
very valuable brands, you should consider going to the trouble of
approaching major search engines and paying for the keywords which
closely match your brand so that they are redirected to your site
instead. (Potentially needless expense, but likely to be revenue
generating nonethless.)
If you're currently using metatags or
paid keywords which are another company's brand to attract traffic to
your site, then beware - I don't think this is going to be tolerated
for too much longer. There's something inherently wrong with trading
off another's brand, whether the current law disallows it or not.
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