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Google faces trade mark class action over AdWords

Google is facing an attempt to file a class action lawsuit over its US policy of allowing companies to use trade marks they don't own to trigger their internet adverts. If it gathers enough participants, the suit could be costly for the search giant.12 May 2009

Class action law suits are US legal cases in which many companies or people in a similar position band together to collectively sue a company. A company called Firepond has sued Google and wants other companies who believe their trade marks have been violated to join it in one big case.

Firepond, a small sales process software company, has sued Google, claiming that its AdWords system infringes its trade marks. AdWords allows companies to pay for certain keywords to trigger their own adverts, which are displayed alongside in Google's search engine results.

It is also seeking to turn its case into a class action suit, whereby a court lumps together many very similar cases against the same defendant for efficiency's sake. Payouts are then usually split between the lawyers running the case and the many defendants.

Firepond has sued not just Google but also its online video subsidiary YouTube, AOL, MySpace, Turner Broadcasting and Interactive Corporation because these companies use Google's search engine and AdWords system on their own sites.

Trade mark rights in keyword advertising systems have been controversial for some time around the world. Google used to only allow other companies to bid to have their ads displayed beside trade marked keywords in the US and Canada.

It expanded that policy to cover the UK and Ireland last year, and to cover a further 190 countries earlier this month. The UK and Ireland are the only European Union countries in which any trade mark can be bought as a keyword by any company.

"Google has improperly infringed [Firepond's] 'Firepond' Marks by selling, for example, [its] trademark 'Firepond' to [its] competitors as a keyword so that when an Internet User searches for 'Firepond' on...Google's Internet search engine, the competitor's advertisement hyperlink will appear at the very top and/or on the right side of the first page of search results…thereby confusing Internet Users and diverting a percentage of such Users from [Firepond] and enjoying and benefitting from all the goodwill and 'buyer's momentum' associated with [its] valuable trademark," said Firepond's suit.

"[Google] profit[s] financially from infringing upon…protected trademarks and assisting and encouraging third parties to do so as well," said the suit, which was filed this week in the US District Court for the Eastern District of Texas.

The suit said that "the so-called 'Sponsored Links' do not always clearly identify themselves as advertisements", and that users are "duped into clicking through to a competitor's Sponsored Link".

Trade mark law expert John Mackenzie of Pinsent Masons, the law firm behind OUT-LAW.COM, said that Firepond may have difficulty in establishing the basis of a class action suit, which depends on all the suing parties facing the same problem.

"Each individual trade mark infringement will be different and it will be difficult to make a case," he said. "A brand such as Kodak is famously distinctive, whereas brands made up of common words will be in a different situation. Kipling will be different again because it is a personal name, a brand and it has products which will be sold by other people, who will have a legitimate reason to use it as a keyword," he said.

Mackenzie did say that, despite the difficulties, the most effective way for brand owners to tackle the keyword issue is in a class action law suit. "The courts in the US are split on the issue, some think buying a keyword is trade mark use, some think it isn't. There hasn't been a fully fought trial on this, and it is about time there was," he said.

French courts have previously backed trade mark holders' claims, and ruled as recently as February of this year in favour of two travel companies who claimed that Google's sale of their names as keywords was trade mark infringement.

The European Court of Justice has been asked by the German Federal Supreme Court whether the purchase of keywords in advertising systems counts as a use of a trade mark that could lead to infringement proceedings.

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