The US District Court for the Northern District of California
found that there was "initial interest confusion" over the use of
the term by Aroa Marketing. That means that internet users would be
likely to be diverted from the site of the trade mark owner to that
of a competitor because of the use of the trade mark.
Google operates a keyword advertising system called AdWords.
Using the system, a business can pay to have its advert displayed
beside search engine results when a certain term is typed into the
search engine.
Aroa paid to have its adverts appear when someone searched for
the term 'smart money clip', which is trade marked by rival money
clip seller Storus Corporation. It also included the term in the
text of the advert itself.
Storus asked for a summary judgment from the court, which it
received.
"The Court finds Aroa used a mark identical to Storus’ mark with
respect to the same type of product, a money clip, and that both
Storus and Aroa marketed their respective money clip products over
the internet," said the Court's ruling.
Judge Maxine Chesney found that there was no doubt that the
usage caused a 'likelihood of confusion' in consumers' minds. "The
Court finds Storus has shown no material issue exists as to a
likelihood of confusion by reason of Aroa’s having used Google’s
AdWords program in the above-described manner," said Chesney's
ruling.
Judge Chesney did not say whether the use of the trade mark as a
keyword without also using it in the text of the ad would have led
to the same result.
In the US and Canada, Google's own policy is to investigate
claims that focus on the use of a rival's trade mark within the
actual text of an ad. As US academic Eric
Goldman notes in his blog, Storus could have saved on legal
fees by submitting a complaint direct to Google, without going to
court.
Had Aroa not used the trade mark in the text of its advert,
Google's policy would not protect it. Its policy for rights held in
the US and Canada provides that Google will not investigate a
company's use of a rival's trade mark to trigger adverts that make
no mention of the trade marked term.
Google's policy outside the US and Canada is to investigate
complaints of trade marks used as keywords as well as their use
within adverts. That policy is consistent with court rulings in
France which have suggested that the use of a registered trade mark
as a trigger can be infringement. However, in the UK, the courts
are likely to offer less protection.
A recent case before the High Court found that the sale of a
trade mark as a keyword was unlikely to be infringement. Yahoo! won
a case brought against it over the alleged use of the trade
mark-protected term 'Mr Spicy' in keyword advertising.
Yahoo! won that case because the keyword in question turned out
to be 'spicy' and not the registered mark 'Mr Spicy', but the judge
in the case said that the verdict would probably be the same even
if the keyword term had been identical to the trade mark.
Mr Justice Morgan wrote: "there can be no objection to Yahoo, if
this is what they want to do, to solicit from third parties the use
by those third parties, in return for payment, of a keyword 'Mr
Spicy' if they are going to attach 'Mr Spicy' to goods and services
different from those protected in Mr Wilson's case."
