So I have just received this:
-----Original Message-----
From: Google [mailto:trademark-policy-revision@google.com]
Sent: 04 April 2008 11:11
To: Alex Chapman
Subject: Google Trademark Policy Update
Hello,
We're writing to inform you that we're changing our trademark complaint procedure in the UK and
Ireland
. This change may affect how we handle the trademark complaint you currently have on file with Google.
If you've submitted a complaint letter requesting that we prevent advertisers from using certain trademark terms anywhere in their ad text, we will continue our efforts to support your request. However, from May 5, 2008, our trademark complaint investigations will no longer result in Google monitoring or restricting keywords for ads served to users in the UK and
Ireland
. This will bring our procedure in line with the approach taken in the US and
Canada
. Complaints received on or after today will be processed under our revised procedure.
You do not need to file your trademark complaint with us again unless you would like to amend it based on the new guidelines. For more detailed information regarding our trademark complaint procedure, we invite you to review our revised complaint procedure, posted online at http://www.google.co.uk/tm_complaint.html.
To learn more about this trademark policy revision, please visit http://adwords.google.com/support/bin/answer.py?answer=92877&hl=en_US.
Sincerely,
Advertising Legal Support Team
Very Interesting
I believe this follows the recent decision in the "Mr Spicy" case where the Judge held that the only use of the trademark was made by the user entering the search term into the browser. This use was not considered to be use which would amount to trademark infringement.
My view is that that decision is a very dangerous one to rely on as the claimant was a litigant in person and his claim was against Yahoo.
Yahoo's lawyers would therefore have had no trouble persuading the judge that the use of the trade mark as an adword was not actually use by the search engine.
However Google have taken the opportunity to change its policy and that may mean that those using the trade marks of others will be laughing - and I suspect there will be a few more lawyers kept busy.
It seems that it is still trade mark infringement or passing off to use a third party's trade mark (registered or unregistered) as an adword but only by the person purchasing the ad words - not the person (such as Google) selling it.
I can't agree that this is good law and I would expect many of my peers to agree.
I suspect therefore that when the time comes there will be more letters to write to Google to persuade them that the court's ruling is wrong (or at least can be distinguished on its facts) and if that doesn't work I suspect that court action will follow - hopefully brought by someone represented by lawyers who are able to address the relevant issues and therefore provide some clarification.
For those interested the relevant part of the Trade Marks Act 1994 is set out below.
Would you not say that selling the adword "Coca Cola" that was "use in the course of trade of a sign"?
The Trade Marks Act 1994 (http://www.opsi.gov.uk/acts/acts1994/Ukpga_19940026_en_1.htm)and the CTM Regulation (which covers Community Trade marks) provide that a trade mark owner can prevent a third party from using in the course of trade a sign which is:
1. identical with the trade mark in relation to goods or services which are identical with those for which it is registered
2. (a) identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3) (a) identical with or similar to the trade mark, and
(b) used in relation to goods or services which are not similar to those for which the trade mark is registered,
where the trade mark has a reputation in the
United Kingdom
and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
