The dispute has been brought by parent company CNG Financial
Corp over Google's AdWords service. The service allows advertisers
to sponsor particular search terms so that, whenever that search
term is entered, the ad will appear next to users' search results
under a list of 'sponsored links'. When the ad is clicked, the
sponsor is charged.
Google allows trade mark holders to request that their trade
marks do not appear in the headings or text of sponsored links. But
the search engine will sell trade marks as keywords to rivals of
the trade mark holder. This was justified by a previous court
ruling on the grounds that it does not cause confusion among
users.
Google has a different policy outside the US and Canada, where
trade mark holders can object to their marks being sponsored by
others. This policy is consistent with French court rulings against
Google over its sale of certain trade marks as keywords.
The Cincinnati Enquirer reports that Check ‘n Go’s suit is
based on Google's sale of particular keywords, rather than the text
of the ads triggered by those keywords. The Cincinnati District
Court has been asked to grant an injunction to prevent the search
giant from selling ads related to the trade mark. The suit also
seeks damages.
In response, Google spokesman Jon Murchinson, told the Enquirer,
"Our policy is lawful, and we're willing to address it in court if
need be".
It appears that the latest case will challenge the reasoning of
Judge Leonie Brinkema of the Eastern District of Virginia, who was
asked to rule on Google's sale of the keyword "GEICO". The car
insurance firm of that name was told that there was no evidence
that the use of its trade mark as a sponsored search term caused
confusion.
Judge Brinkema did acknowledge that GEICO had produced survey
evidence "sufficient to establish a likelihood of confusion
regarding those Sponsored Links in which the trade mark GEICO
appears either in the heading or text of the ad."
Accordingly, she allowed the case to continue over the question
of whether the use of the trade marked terms in the text of
sponsored ads breached GEICO's rights – albeit the case settled
before this issue could be argued in court.
Lee Curtis, a Trade Mark Attorney at Pinsent Masons, the law
firm behind OUT-LAW.COM, said that the case will not only be of
interest to trade mark owners and advertisers in the US, but across
the globe. "In the UK, although case law on keyword disputes is
fairly limited, what cases there have been have tended to follow
the reasoning of Judge Brinkema in the GEICO decision," he
said.
Curtis pointed to an English Court of Appeals ruling in 2004 in
a dispute over the keyword 'Reed'. This was not a Google AdWords
dispute; rather, Reed Executive plc was suing Reed Business
Information and others over the promotion of a venture called
totaljobs.com. The word "Reed" was used to trigger ads for
totaljobs.com in Yahoo!'s search engine, but the court ruled that
there was no confusion.
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