There's an increasing body of law dealing with the issue of
Adwords. If you're wondering what I'm on about, this
refers to the fact that you can - if you're prepared to pay
enough money - buy from Google the brand name of your
competitor as a so-called 'Adword'. If you do this your
advert will pop up on the screen of every person who keys in your
competitor's brand name as a search term. The legal issue
that arises here is this: are you or Google infringing the
competitor's trade mark registration?
Google certainly isn't, because it isn't actually using
the trade mark but simply acting as some sort of intermediary. So
said Europe's highest court a few years back, in a very
important case involving Louis Vuitton, and subsequently in one
involving Interflora. And you as the buyer of the Adword aren't
either, provided that your ad doesn't cause any consumer
confusion, and provided it doesn't lead to the competitor's
trade mark becoming generic. In other words, your ad must make it
perfectly clear that your product is in no way linked with the
product of the competitor.
This same line was followed by a Dutch court recently. The
Dutch case involved Philips, which had bought two brand names
belonging to a competitor, Tefal and Actifry, and had used these to
ensure that people searching these names saw ads for its competing
product which is called Airfryer. The court said that by now most
people understand how Adwords and pop-up ads work, and that they
won't assume any connection provided that the ad doesn't
So if you're going to buy a competitor's trade mark as
an Adword, do make sure your ad is very clear. And another thing,
make sure that it's honest too – in the Philips
case the court held that there was no trade mark
infringement, but that the ad was still misleading
because it exaggerated the product's abilities a tad. The
court ordered Philips to put that right.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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