Wood Trade Marks and Design Limited

Trade marks are a difficult beast – some try to use them to stop their competitors commenting on their behaviour.  We see this in many forms:

1. Trade mark owners trying to seize back domain names which have the trade mark in the name when they are being used for criticism sites;

2. Trade mark owners trying to suggest that competitors cannot use their trade marks when they criticise them; and

3. Trade Mark owners trying to use trade marks to stop people using the marks in Adwords.

All three situations are difficult, as there is inherently nothing wrong in commenting and using trade marks where the use is to identify the competitor.  The test is whether the use is in accordance with honest business practices, however, and if you go to far then you stray outside the realms of acceptable practice.  Whether it is acceptable practice or not may be difficult to assess – some will be put off by receiving threatening letters even when they have a “gut” feeling that they should be able to keep using the mark.

Further problems arise where someone has a logo – are you going too far if you use the logo?  If you could quite easily identify them just by the word part (think ESSO) then it may well be that using the logo may go too far.

In the case of AdWords, there may be a difficult “squeeze” involved.  If you want to say that JOHN SMITH vodka is made by underpaid child labour, you may want to use the trade mark JOHN SMITH as an AdWord and also say in the text “Read here how JOHN SMITH is made by child labour”.  The problem comes that Google will routinely reject the advert (and take it down if complained about) on the basis that the trade mark is in the advert text.  This is in their terms of service, so it’s a matter of Google’s terms with advertisers rather than a legal requirement.  If you don’t make the advert clear, however, then the trade mark owner may suggest that you are conducting a “bait and switch” site, attracting people by suggesting that the site is real/official/authorised.  If they successfully argue that then you may find yourself on the wrong side of a trade mark case.

The centre ground would appear to be to use wording which makes it clear that it is not official – something like “Read the truth about child labour that they don’t want you to read!”.  It seems unlikely that anyone would be confused, and you have made it clear what they will find.  Nevertheless, you should probably expect to have to explain your actions at some point.

By the way, in case anyone is in ANY doubt, nothing on this blog constitutes legal advice – don’t simply rip off my comments and think I’ve given you “proper” watertight legal advice!

Hot off the press, the ECJ have ruled that the use of other people’s trade marks in sponsored advertising (such as Google AdWords) DOES consitute trade mark infringement.  The only way out of it for the advertiser is for them to show that consumers would not think that the advert led people to believe there was any connection to the trade mark owner.  If it is not easy to tell, then it is still an infringement. 

Google themselves are found not to be using the trade marks.  This is important for them, as most brand owners are targetting them as they cannot spare the time to police Google’s searches.  It was not ALL good news, however, as the court found that Google were more than a “mere host” on their activities, opening up the possibility of action under different grounds.  It also puts the focus on eBay and YouTube, who also have activities and run their services as being more than mere “repositories”.

Watch out for a new AdWords policy.. I suspect that they will say that if they get a complaint from a brand owner then the ad comes down unless you show that your use is ok.  The court also left a further issue open, which is whether it is ok to use a trade mark if it is clear that there is no connection, but the use suggests that you goods or services are comparable in such a way that you piggyback on the trade mark – I think they will say it is an infringement to do so.