Issue 33 was entitled The Last Word on Adwords? (note the question mark, which was particularly prescient). For the benefit of those few who don't remember every word of that marvellous missive, it dealt with the case of Louis Vuitton v Google. This European Court decision made it clear that if you buy a competitor's trade mark as an Adword - which you do so that anyone typing in the competitor's name on a Google search is referred to your site – you won't be infringing your competitor's trade mark, provided that you make it clear that your product isn't connected with the competitor. In other words, if you don't cause consumer confusion or, to use modern trade mark terminology, you don't compromise the main function of the trade mark, which is to indicate origin.
Modesty prevents me from mentioning that I raised concerns about
this decision, and suggested that other trade mark functions might
be affected by Adword use. What I can tell you is that a recent
European Court decision in the case of Interflora v Marks &
Spencer adds some much needed nuance – the facts were that
M&S bought Interflora as an Adword so that every thoughtless
bastard, when he suddenly get's that sick
'ANNIVERSARY!' realisation and frantically googles*
Interflora, ends up on M&S's site rather than
Interflora's. The court recognised that Adword use may infringe
a trade mark if that use affects another of the trade mark's
functions, such as its investment function. This, the court
suggested, might happen if it substantially interferes with the
proprietor's use of its trade mark to acquire or preserve a
reputation capable of attracting consumers and retaining their
The decision also deals with another aspect - whether Adword use can take unfair advantage of, or be detrimental to, the distinctive character or repute of a trade mark with a reputation (in other words the other type of infringement, known as free-riding or dilution). Quite possibly said the court if, for example, the Adword contributes to turning that trade mark into a generic term. Which, I suppose, could easily happen to a brand name like Interflora if it gets used by every Thabo, Dirkie and Hashim (yes re-naming has now been extended from place names to idioms) to lure people to their flower delivery service. Even more intriguing!
So, unlike everything else in South Africa, it's not all black or white. You do get the impression that the courts are making this stuff up as they go along, and that there's lots more to come. But if you are going to use a competitor's mark as an Adword, be wise: make it clear on your site that you're not connected with the competitor.
*Yes this is generic use of a trade mark, well spotted!
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