Out-law.com has an article entitled Google’s sale of trade mark as keyword may be ‘use in commerce’, says US Court of Appeals. The use of the trade-marks of others for either keywords to trigger paid ads, or in the visible ads themselves has been controversial. Courts have come to different conclusions in different countries. The legal struggle is whether this amounts to “use” as defined under trade-mark law.
The article points out that a U.S. appeal court has said that it might be infringement, and sent it back to the trial court for consideration. This case seems to key in on Google’s tool that suggests adwords – suggesting that Google may have some responsibility because it suggested the adword that happened to be a trade-mark.
I’m not so sure that is the right analysis. Perhaps Google did suggest a competitor’s mark – but trade-mark infringement only occurs when there is “use” in conjunction with similar products or services. How is Google supposed to know whether my use will infringe, or be perfectly lawful? A ruling that Google can never suggest keywords that happen to be trade-marked does not make sense to me.
For example, the word “Canton” has been trade-marked for various things by various companies in the U.S. and Canada, including speakers, liqueur, and soup. So if I wanted “David Canton” as a keyword, why would it be a problem for Google to suggest “Canton” as a possible keyword? Surely its my responsibility to use that keyword for my own purposes to promote my legal services – and not use it to sell my own line of speakers, liqueur or soup.
Google should have a role to play if I do that – but the role should be to forward complaints or put the complainant in touch with me – not to be liable itself for my infringement.
In my personal view it is, and should be, a trade-mark violation if my Google ad uses a competitor’s mark to promote my competing wares and services – no differently than if I used it that way in a print ad. Its the concept of passing off my wares or services as my competitors, which essentially means misleading the buyer that my stuff is my competitor’s stuff, and trading on my competitor’s goodwill.
Arguably it is the same if I use that trade-mark as a keyword – even if it does not appear in my ad. The theoretical legal issue is whether there is “use” when one types a trade-mark as a keyword search, and a competing user shows up in an ad.
But between my ability to use the trade-marks of others for non-competing stuff, or other lawful uses which might include – depending on the country and facts – the ability to compare products or comment or review them – why should Google be expected to behave as a court and figure all that out for any given use?
Facilitate a communication between the parties, yes – but liability for it??