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
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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