Briefings
Intellectual Property: Google to change UK policy: anyone can now bid on trade marked keywords
|
Intellectual Property
|
| May 2008 |
As from 5 May 2008, Google will cease its keyword
“trade mark protection" policy in the UK. This means that any party, including business rivals and competitors, can bid for another entity’s keywords in the UK, even if that keyword is registered as a trade mark. Google’s policy change only affects bidding on keywords in the UK and Ireland, reflecting the policy already in place in North America. Brand owners can still retain protection from Google in all other territories.
Keywords
A “keyword” is effectively a registration with a search engine which allows a brand to ensure that each time their brand name is typed into a search engine (such as Google) that brand’s advert, or a link to its website, will appear in the Sponsored Links section of the search page.
The effect on brand owners
Prior to Google’s change in policy, a brand owner could ensure monopoly rights over its trade marked keywords by asking Google not to permit bids from any other parties on such trade marks, providing that the brand could show valid trade mark registrations. That protection is now being removed. Brands will have to compete with the rest of the market in bidding for keywords containing their trade marks. Undoubtedly, the cost of bidding for those keywords containing valuable trade marks will increase substantially.
The Law
If a competitor purchases a keyword containing one of your trade marks, but does not display that keyword in the linked advert, it is unlikely that such activity will amount to an infringement of your trade marks; this area of the law is effectively untested.
If, on the other hand, a competitor purchases a keyword containing one of your trade marks, and that trade mark is displayed in the linked advert, the prospects of taking legal action against such a competitor increase greatly. In such circumstances, it is far more likely that a Court will infer that customers are being confused into thinking that the competitor is linked with the brand. In fact, Google’s own rules say that adverts should not feature competitor’s names.
Recommendations
All businesses should now keep a careful eye on their keyword portfolio and give consideration as to how that portfolio should be amended and updated, being ready to spend extra money on those keywords which are business critical. If you find that you are being outbid on keywords containing your own trade marks, you should monitor the search engines carefully, and the contents of the relevant linked adverts, to determine whether or not you need to obtain legal advice.