Open UKLSR Volume 1(2) - Uklsa

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14 The Legality of Google AdWords Google allows its keyword-linked advertisements to circumvent Google’s usual page ranking system for non-sponsored links. 4 Since the advertisements appear beside search results that have been subjected to the normal page ranking algorithms and often do not explicitly indicate that they are sponsored links, Google users may be misled to assume that the advertisements are the most relevant results. 5 The advertisement thus trades on Google’s reputation for delivering the most appropriate search results to entice users to click on them, while making a potential global advertising audience available at very low financial and technical cost. 6 I(b) – Google’s policy towards the use of its AdWords service Pertaining to Google’s new trademark policy in the UK towards AdWords, third parties will be able to bid and use competitors’ marks as AdWords keywords so as to direct traffic to their own websites, providing there are no risks of confusion or unfair competition. 7 This means that Google will continue to investigate complaints about trademarks in advertising but will no longer complain about trademarks used as keywords. I(c) – The relationship between EU law and UK law Trademark law is only partially harmonised at the EU level, and the application of Union law (upon a ruling of the European Court of Justice (“ECJ”)) remains in the hands of the national courts of the EU Member States. ECJ Cases will be referred to in this paper as and when necessary as it lays down the general framework of how s.10(1), s.10(2) and s.10(3) of the TMA is to be applied by the UK Courts. II – The position under UK Law There are four ways in which a party can be found liable for trademark infringement in the UK. The first three ways are derived from s.10 of the TMA whilst the fourth is a civil action in Tort. Each will be discussed in detail and considered in relation to the potential liability of Google AdWords under them. II(a) – Section 10(2) – Likelihood of Confusion; Likelihood of Liability Section 10(2) refers explicitly to the likelihood of ‘brand consumer confusion’. The precise meaning of confusion is not in question; on the other hand, the question of how confusion is to be assessed under s.10(2) has been addressed by the courts. In the UK case of Och-Ziff 8 , the High Court noted that the principles applying to infringement under the ‘registration context’ was also applicable to that under the ‘infringement context’ (of which s.10(2) deals with). 9 In so doing, the High Court 4 Supra Note 1. 5 ibid. 6 ibid. 7 Amelie Labbe-Thompson, ‘Google’s revised AdWords policy causes industrial divide’ (2010) E.C.L. &P 12(8). 8 [2010] EWHC 2599. 9 The only difference being that confusion under the infringement context only requires consideration of the use that has actually been made of the sign in context, while confusion under the registration context requires consideration of notional fair use of the mark applied for.
UK Law Students’ Review – 2013 – <strong>Volume</strong> 1, Issue 2 summarised what they thought to be the ECJ’s overall approach towards confusion under s.10(2) for both word and composite marks, with reference to the cases of Portakabin v Primakabin 10 and O2 v Hutchinson 11 . As this paper is dealing with Google AdWords, only the relevant parts of the guidance dealing with word marks will be addressed. From the outset, the likelihood of confusion must be appreciated globally. There must be confusion to the average consumer of the goods or services in question, who is deemed to be reasonably well-informed, circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind. Moreover, it should be noted that the average consumer normally perceives a mark as a whole and does not analyse its various details. 12 Additionally, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa. 13 As for highly distinctive trademarks, the courts have also recognised that there is a greater likelihood of confusion. This is, however, balanced against the recognition by the courts that mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient to constitute confusion for the purposes of s.10(2). In other words, the reputation of a trademark does not provide grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense. Lastly if the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically linked undertakings, then it would lead to a finding of confusion under s.10(2). It should be noted that although the above guidance elaborates on the factors and refines and articulates the process of analysis to which those factors are subjected, the High Court in Lewis v Client Connection 14 cited with approval Jacob LJ’s earlier observation in Reed v Reed 15 to the effect that whichever approach one uses, one is essentially taking a holistic view as to whether there is significant consumer confusion. It is therefore a value judgment to be drawn from all the circumstances, and as such, further conceptual over-elaboration may tend to obscure (rather than elaborate) and is accordingly unhelpful. It should also be noted that consumer brand confusion includes that of initial interest confusion, which refers to confusion on the part of the public as to the trade origin of the goods or services in relation to which the impugned sign has been used arising from use of the sign prior to purchase of those goods or services. 16 This means that there can be a likelihood of confusion under s.10(2) at the point when a consumer 10 [2011] Bus L.R. 1339. 11 [2009] Bus L.R. 339. 12 Such as that in Och-Ziff, where the High Court pointed out that the words ‘OCH’ and ‘Och’ were more likely than not to lead to consumer brand confusion. 13 Such was the case in Och-Ziff, where the High Court rejected defendant’s counsel submission that the addition of the word ‘CAPITAL’ sufficed to avoid a likelihood of confusion. The Court explained that the word ‘CAPITAL’ is descriptive, or at least non-distinctive, for financial services and in particular investment services, for which both the plaintiffs and defendants were involved in. 14 [2011] EWHC 1627. 15 [2004] RPC 4. 16 Supra Note 8, at [87]. 15
Page 1 and 2: January 2013, Volume 1: Issue 2
Page 3 and 4: The UK Law Students’ Association
Page 5 and 6: Acknowledgements The UK Law Student
Page 7 and 8: IN WHOSE BEST INTERESTS? RECONSIDER
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