Europe’s Court of Justice has confirmed that use of a competitor’s name as an Internet advertising keyword does not constitute a violation of European trademark law.
The case involved two companies Primakabin and Portakabin, which both manufacture temporary sheds and buildings.
Primakabin used keywords like “portakabin” and mis-spelled variants “portacabin” in keywords it used with Google AdWords in order to draw users to Primakabin products when they searched for its competitor.
In coming to the conclusion the court that such conduct did not constitute trademark infringement the court said:
“ A trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an internet referencing service without the consent of that proprietor – unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark.”
Funny I thought that anytime one company uses the trademark of another it’s “seriously detrimental to the reputation of the mark”
Guess that’s only if a domainer is doing it.
You can read the entire opinion of the court here
Last September the same court reached a similar decision in a similar case involving Adwords but between different parties.
I agree, since (e. g.) an online shop can’t pay royalties for every trademark it uses in its ads to sell the products
Guess that’s only if a domainer is doing it.
Wouldn’t that depend how the domainer was using it; i.e. on a web page or in a domain name?
“Wouldn’t that depend how the domainer was using it; i.e. on a web page or in a domain name?”
Yes.
It’s good to see that, at least with respect to ad keywords, courts are becoming more sophisticated in how they approach these things. In jurisdictions where comparative advertising is permitted, this kind of thing, so long as not done in a deceptive manner, is perfectly permissible. We are completely used to television and print ads in which “Our product is better/cheaper/whatever than Brand X”, but when people do that on the internet, some legal types freak out because of this belief that “the internet is different”. The internet is NOT different. The problem has been with people who think the internet should have different rules than anywhere else.
I always trot out my drugstore example. If you walk into a drugstore and ask the clerk, “I would like to find Tylenol”, the clerk will send you to the pain reliever aisle. Tylenol will be identifiable on that shelf. Also on that shelf will be every other brand of competitive pain reliever. The real world does not work on the basis of “I am looking for Tylenol”, and give you a set of “search results” where Tylenol is the only thing to which you are exposed. Likewise, if you go shopping for a Honda, the odds are that you are going to have to drive to that part of town where there are a lot of car dealers. There is a reason why every city has “that street where all the car dealers are”.
Unfortunately, some nitwits have gotten it into their head that the internet should be “different”, and that any use of a trademark should result in a sterile environment where a consumer is not exposed to competitive products of that type. There is a difference between confusing consumers and informing them. Someone doing a search for “BMW” may have a general interest in BMW automobiles, or a broader interest in European luxury cars. As long as what they find allows them to clearly distinguish between a BMW and a competitive model of Mercedes, they are not being “bait and switched” because nobody is going to buy a Mercedes under the false impression they are really buying a BMW. However, Mercedes has every right to say, “You know, if you are looking for a BMW model X, you might want to consider looking at our Mercedes model Y, because we believe it provides the same/better features at a greater value.”
When your supermarket puts a sign out saying, “Special Coca-Cola 2 Liters For 99 cents”, you are still going to have to go inside and find out that the supermarket also sells a dozen other brands of soft drink. You may buy the Coca-Cola, but you might just change your mind and buy another soft drink, or something else entirely. That’s the entire point of why stores advertise sale items in the first place – you are likely to pick up other items in addition to whatever they had advertised for sale.
But there are differences with domain names. Some take the view that the domain name is more like the “name of the store” which is having the sale. When you see Piggly Wiggly advertising “Coca-Cola for 99 cents”, you still know that you are going into a Piggly Wiggle supermarket, and not “The Coca-Cola Store”. People have fundamentally different opinions about that kind of thing. For example, at last year’s WIPO conference I had posed the problem of a camera store, selling all kinds of cameras, using the domain name WeSellNikonCameras.com. It is a truthful statement in that the store DOES sell Nikon cameras. Among UDRP panelists in the discussion, it was interesting to see the breakdown based simply on what country they were from, and how that country deals with trademark usage. In general, US panelists tended to be most sympathetic to the argument that “it is a truthful declarative statement”, while Latin American panelists tended to “it is an unauthorized use of someone else’s mark.”
Particularly in Latin American countries, there is not an exception for competitive/comparative use of marks. That struck me as odd until I had a conversation with an Argentinian lawyer which started with both of us thinking the other was completely crazy.
But, when you think about it… Every time that AT&T or Verizon runs an ad campaign about “we are better than them because….”, there is a lawsuit over the claims in the ad. Verizon had to edit their ads last year based on 3G coverage maps, because they where found to give a false impression of general phone or EDGE network coverage. Basically, while one company has better 3G coverage, the other company has better general coverage.
The conversation with the Argentinian convinced me that it is simply a choice about whether you want to have continual litigation over these sorts of fair use claims, or whether you simply want to make a bright line rule which is easy to understand. It’s a valid social choice for any jurisdiction to make as a matter of policy, but it wreaks havoc in a situation like the UDRP, in which basic assumptions of the decision makers are just not the same, independent of some larger question of what is “right or wrong”.
That kind of thing is true in a lot of areas of law. There is always a camp that wants to say “let’s make this simple” and a camp which wants to say “let’s make this fair”. Black and white rules are easy to follow and understand, but are often not “fair” in their application. More complex rules are more “fair”, but then people complain that they are too complex. For any problem, there is always a solution which is simple, easy to understand, and dead wrong.
All a bit complicated for a simple bloke like me but hey it’s great news! 🙂