Use of trade mark in search engine ad infringed, rules US court

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."