Passing off Law re google adwords

[katej]

Recently a competitor has been using my company name which I have trademarked as one of their google adwords. I mentioned this to someone and they told me they often do this to competitors and it was common in business circles. Yet someone else said this was called 'passing off' and that marks & spencers employs someone full time to ensure companies do not use their name on google to attract website visitors.

Any advice from the legal people please would be appreciated.

 

[directmarketingadvice]

Recently a competitor has been using my company name which I have trademarked as one of their google adwords. I mentioned this to someone and they told me they often do this to competitors and it was common in business circles. Yet someone else said this was called 'passing off' and that marks & spencers employs someone full time to ensure companies do not use their name on google to attract website visitors.

Any advice from the legal people please would be appreciated.

I'm not a lawyer, but I'll give you my understanding as a PPC consultant.

If you believe that no-one should be allowed to bid on your company name on adwords, talk to google. But expect them to say "no" to you.

If you set your sights lower and say that no-one should be allowed to use your name in the text of their ads, then google would be more willing to listen to you.

However, they may still say "no".

So, ultimately, the answer is "talk to google and see what they're willing to do for you".

Steve

 

[ken_uk]

have a read here http://www.google.com/tm_complaint_adwords.html

 

[katej]

Thanks guys for your advice. According to the article Google will investigate this further because the name is trademarked, if it had not been trademarked I would have to take the issue up myself. Someone has also emailed me saying it had happened to them and google do take any trademark infringement seriously, although it does take quite a while for the procedure to go through

 

Interesting post as this is currently happening to us. Have reported it now though so thank you for the link

Actually, I am surprised because a number of our competitors seem to do it to each other on a fairly regular basis!

 

[Words of Magic]

Recently a competitor has been using my company name which I have trademarked as one of their google adwords. I mentioned this to someone and they told me they often do this to competitors and it was common in business circles. Yet someone else said this was called 'passing off' and that marks & spencers employs someone full time to ensure companies do not use their name on google to attract website visitors.

Any advice from the legal people please would be appreciated.

Get in contact with google as soon as possible. Make it clear to them that a competitor is using your trademark in a google adwords campaign. Google should take immediate action and resolove your issue asap. Good luck.

Wishing you all the success in the world,

 

[katej]

Thanks Paul, I have filled in the complaints form so will wait to hear from google now. Its interesting to see that is happening to other businesses too, which is a shame as I'm all for healthy competition but using someone elses name to trigger your ad seems to be quite unethical in my view.

 

[Deleted member 13430]

Maybe of interest on Adwords and the case in particular:-

http://www.out-law.com/page-6775

http://www.out-law.com/page-6776

the basics of trade mark law:-

http://www.out-law.com/page-339

 

[redyork]

I'm not an expert in this field but I'd promptly write to the company that is using your tradmarked name and clearly point out that the name is registered to you and if they do not remove the name within all advertisments and any other company marketing material with immediate effect you will pass the matter to your legal representation. Ask them to confirm once they have removed it too. Adwords is simply the forum that they are using, Google cannot be expected to police this or be the mediator, contact the company directly. good luck, how annoying !!

 

[VeryMark]

Get trade mark registration for your name and you'll always be likely to have a better case.

 

[jacnixon]

Following the latest ruling in the ECJ you should now be able to bid on keywords.

see: http://www.withersrogers.com/news/1...low_for_brand_owners_and_a_victory_for_Google

 

[VeryMark]

This is not necessarily determinative since (a) it only affects the EU, (b) individual national courts in Europe can still reach different decisions on the facts, and (c) it still depends on what Google actually does.

 

[jacnixon]

Hi

I have a question relating to "passing off".

If I bid on the keyword "marks and spencer" and my advert reads as follows, is this passing off?

Wonderful food
buy food online
excellent prices
www.anothercompany.co.uk

Why would this be passing off - because although I am bidding on a trademark term I am not trying to say I am Marks and Spencer.

Moreover, can a person stop you from bidding on a keyword if they are in the process of applying for a trademark?

Thanks for the help

 

[VeryMark]

Infringement of registered trade mark and passing off are two different things.

Passing off is decided under the common law (i.e. not under statute), and is not affected by any decision of the European Court of Justice.

Passing off cases are decided very much on the facts, i.e. is someone else actually trading off the back of another person's reputation in such a way as to damage their business?

It all depends too on what individual companies decide to do or what they will accept ........ for example, if you search for Marks & Spencer food, you can find Waitrose coming up down the right hand side.

 

[jacnixon]

Nice solid answer. Many thanks Philip

Infringement of registered trade mark and passing off are two different things.

Passing off is decided under the common law (i.e. not under statute), and is not affected by any decision of the European Court of Justice.

Passing off cases are decided very much on the facts, i.e. is someone else actually trading off the back of another person's reputation in such a way as to damage their business?

It all depends too on what individual companies decide to do or what they will accept ........ for example, if you search for Marks & Spencer food, you can find Waitrose coming up down the right hand side.

 

[The Resolver]

Kate said she has trademarked. Since they are competitors to you this is a straight forward breach of the trademark by the company concerned. They ar egaining market advantage through your trademark. Same if they use your trademark in the code of their website (check the meta names etc in the webpage source.)

You can seek to persuade Google to stop it but , whilst originally they used to not allow this practice, they have more recently chnaged their policy to be neutral. By all means follow Google's process, but it may be quicker to have a 'cease and desist' letter sent through solicitors and then sue. Th eletter may be suficient. Th epoint about pursuing Google alone is that they can only stop it form a date in the future. You have lost sales in the interim and only the courts can order an account fo sales by the competitor and award damages to you for what is a reasonably likely loss of business.

Both avenues should be pursued. An obvious negotiation position might be to offer not to sue in return for an immediate cessation.

 

[VeryMark]

Kate's original post was two years ago and current post is based on different circumstances.

 

[The Resolver]

Thanks Philip. My UKBF is set to display earliest first and I did not check the date. Just, since posting, read the news items on the final Louis Vuitton decision which reactivated this thread. As you say, does not strictly affect UK courts deciding differently. What is you view as to bare use of a TM as an adword with no inclusion in the ad/site? I have not seen the court report of yestrday , just the news items, but I wonder how the court dealt with this key phrase in the previous ruling, which justified its ruling to permit use as an adword but not in the ad (where it said there was an 'audience' ie read by the consumer):-

" There is no such audience when the advertisers select the keywords. Accordingly, the selection of the keywords is not a commercial activity, but a private use on their part."

I don't know whether the point was argued on appeal that , whilst the selection of the adword may well be, in narrow legal terms, a private activity between advertiser and Google, the buying of the adword defines what happens on selection of it by the consumer when searching so that surely that latter is the commmercial activity.

 

[VeryMark]

Yesterday's ruling by the European Court of Justice (ECJ) in the Google Adwords case (Joined Cases C-236, 237 and 238/08 Google France, Google Inc. v Louis Vuitton Malletier; Google France v Viaticum Luteciel; Google France v CNRRH Pierre‑Alexis Thonet Bruno Raboin Tiger, a franchisee of Unicis) reads as follows:

1. Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
   
   
2. An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.
   
   
3. Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

This decision follows a referral from the French Cour de Cassation, which now has to reach its own decision in these cases based on the ECJ's ruling.

 

[2richardm]

Was about to point out that there is a case involving Marks and Spencer and Interflora going to the European Court at present on this issue - but of course this has already been mentioned here and I had not read through to the bottom of the thread. Just call me a first time poster!

 

[wvpTV]

We are currently on a similar case.

Our legal logic is the Beneficiary (advertiser) is paying for the specific adword to be headlined within his advert with a link to his website.

In other words he has the Trade Mark as his headline for his advert which is also a clickable link back to his website, in our view clearly the advertiser Passing Off.

As it happens he runs a similar business in the same area (location) trying to attract same customers, so clearly in our view a deliberate act, thus wilful fraud comes into the issue and potential compensation.