Pictured: Catriona Wheeler
Internet advertisers who use competitor names to draw traffic to
their own website have been dealt a rap on the knuckles following a
high profile battle between Marks & Spencer (M&S) and
Interflora. Catriona Wheeler, a partner at local solicitors Andrew
& Co LLP, says that new online techniques are demanding new
rules and the latest ruling from the Court of Justice of the
European Union (ECJ) says a trademark owner can stop a competitor
from using their trademark as a keyword in search engines like
Google.
Catriona says: "The judgement stopped short of a complete ban,
saying the competitor would have to be taking unfair advantage of
the trademark owner's reputation or devaluing the trademark
itself."
M&S had selected the word 'Interflora' as a keyword on
Google's paid referencing service, AdWords so that when someone
searched for Interflora on Google, an M&S advertisement
appeared at the top of the screen, as a 'sponsored link'.
Interflora objected to this and brought proceedings in the High
Court on the basis that M&S was abusing its trademark. The
English court referred the issue of whether a competitor could use
a trademark as a keyword to the ECJ, who published its ruling last
month (24th November).
The ECJ ruled that a trademark owner was entitled to prevent a
competitor from using its trademark as a keyword in order to
advertise identical goods or services, or where using the trademark
as a keyword amounts to taking advantage of the reputation of the
trademark owner or is likely to dilute or tarnish the
trademark.
Catriona explains: "Although this case involved the might of
M&S versus a franchise representing small florists nationally,
I suspect that usually it is a smaller company that wants to take
advantage of the reputation of a large company's trademark. Small
businesses should take note of this case and be aware that nowadays
trademark owners are vigilant in protecting their rights, both
online and offline."
The ECJ did not outlaw using a trademark as a keyword
completely: this would be allowed, the Court said, where an
advertisement put forward alternative goods and services and did
not merely offer an imitation of the trademark owner's goods or
services, nor diluted or tarnished the trademark.
Catriona added: "As is so often the case, you can do it if you
do it right, so before you use McDonald's as a keyword to advertise
your takeaway, get advice from an expert."
Anyone wanting to discuss potential trademark issues can contact
Catriona on 01522 512123.