Many businesses are attracting increasing traffic to their websites by purchasing "keywords" from Google or other internet search engines. The idea is that when an internet user uses the keyword to do a Google search, the outcome is a page of "natural" results together with any "sponsored links" which appear prominently at the top. These sponsored links are links to websites of those businesses which have purchased the relevant keywords, e.g. a tools manufacturer would buy 'tool' as a keyword.

The point is intended to be that the advertiser chooses keywords which relate to its business. Problems have arisen – and continue to arise – where advertisers have paid Google for keywords which consist of other (often directly competing) businesses' names and/or trade marks, thereby diverting users from a competitor's website. For example, in December last year, Interflora sued M&S in the High Court for purchasing the word 'Interflora' as a keyword. Interflora says that M&S are guilty of trade mark infringement, and that they are freeriding on Interflora's reputation, giving them an unfair advantage.

In the UK, Google used to work with brand owners to stop their trade marks being used by others as keywords. But in April 2008, Google changed its policy and stopped reviewing complaints regarding trade marks in the UK and Ireland if the complaints relate to a keyword trigger (although Google still controls the substantive text of adverts).

The question of whether there are any legal means to control the purchasing of someone else's brand name as a keyword is a hot topic, as is whether Google itself should be liable. In the US (where Google's keyword policy is the same as in the UK and Ireland) a case in the US court of appeal last month indicated that the sale by Google of a third party's trade mark as a keyword could in fact constitute "use in commerce", in which case, if the claimant can show there has been consumer confusion, there would be grounds for trade mark infringement.

The case has now been referred back to the lower court to be heard fully, but this ruling on appeal has been heralded as a triumph for companies who wish to prevent their brand names being "used and abused" by both internet search engines and by their competitors.

In the UK, it remains unclear from current case law whether this kind of practice would amount to trade mark infringement or passing off, and businesses should be aware of the risk that it could be found to be unlawful. There are, in addition, certain regulations against misleading marketing and unfair trading that may assist in challenging those who purchase third parties' trade marks as keywords, but these regulations are quite new and not yet tested in the courts. In the meantime, the Interflora -v- M&S case has yet to be decided, and several other brand owners are said to be taking action to stop their competitors bidding on their trade marks.

The situation is further complicated by the fact that there is no European consensus on the subject. By way of illustration, a French court fined Google €350,000 in February this year for infringing two companies' trade marks by facilitating their sale as keywords to third parties. A German court deciding several cases on this topic has asked the European Court of Justice directly to rule on whether using a trade mark as a keyword for internet advertising amounts to trade mark infringement, the answer to which is bound to have a huge impact on Google's practices in Europe. An answer from the ECJ may not be forthcoming for some months yet. In the meantime, whilst "watching this space", the message seems to be that advertisers should be wary about choosing keywords which consist of others' brand names, and brand owners should be vigilant about others using their name as a "keyword".

TOP TIPS:

  • Make regular checks of the sponsored links which appear (if any) when you type your own brand name and/or trade mark into an internet search engine such as Google. If you see that a competitor has purchased your mark as a keyword, get advice about what can be done.
  • Beware of purchasing a competitor's trade mark as a keyword as, despite Google's laissez-faire practice, there remains legal uncertainty as to whether this could be regarded by the courts as infringement.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.