Keep your keywords close

Keep your keywords close
In 2010, Google earned US$28 billion in advertising revenues. Thus it is no surprise that Google is vigorously defending its AdWords program, the main source of such revenues, in the United States Court of Appeals. In the coming months, the court will issue a decision. The outcome is important for Canadian trademark owners because Google’s trademark use policies in Canada and the U.S. are identical. Also, Microsoft has recently modified its policy to resemble Google’s. Before discussing the appeal, an explanation of the types of unauthorized online use and search engine trademark use policies is in order.
How a trademark may be employed

Google has been aggressively promoting its AdWords program in Canada. The program permits a web site operator to pay for an advertisement to appear as a sponsored link to the web site, above or to the right of the organic results generated by a search query. The main aspect of the program is that the web site operator buys a keyword, thus causing the sponsored link to be generated when the keyword is employed as a search term. The keyword may be a competitor’s trademark. The AdWords participant also determines the text that appears within the advertisement, which may lead to more overt unauthorized use of trademarks.

Outline of search engine policies

Google’s policies for responding to complaints regarding online search advertising vary by jurisdiction. The policy applied in Canada and the U.S. is the least restrictive. Google will resist investigating a complaint if it does not address the content of advertising text. Therefore Google expects a trademark owner to correspond directly with a competitor who has purchased a trademark as a keyword. Microsoft expects the same from trademark owners concerned about Bing and Yahoo search results arising from the sale of keywords through Microsoft’s adCenter program.

Google’s policy also outlines the permitted use of third-party trademarks within advertising text. Such use is permitted when the trademark appears on a web site corresponding to the sponsored link:

•     In a generic manner and not to reference the trademark owner;
•     Which web site provides information regarding the trademarked goods or services, assuming that the web site is not meant to facilitate the sale of competing goods or services;
•     Which web site sells replacement parts, components, or products compatible with the trademarked goods or services; or
•     Which web site resells the trademarked goods or services.

Background regarding appeal

Rosetta Stone sells language learning products and owns various U.S. registrations for the trademark Rosetta Stone. The company realized advertisers were using sponsored links to misdirect Google users to web sites selling counterfeit Rosetta Stone products or falsely implying a connection to Rosetta Stone. The company sued, alleging Google, through its AdWords program, assisted others to mislead consumers and misappropriate Rosetta Stone’s trademarks by using such trademarks as keywords and in advertising text.

The trial court granted Google’s motion for summary judgment. Among other findings, it held that Google could not be held liable for intentionally inducing advertisers selling counterfeit Rosetta Stone products to use the trademarks.

Strategies for limiting unauthorized online use of trademarks

Trademark owners should institute policies to combat unauthorized online use of trademarks. Online search audits can identify unauthorized trademark use. There is an online complaint process to notify both Google and Microsoft of unauthorized use of trademarks in advertising text. The online forms submitted to both search engine providers require the inclusion of trademark registration numbers, which is yet another reason for registering a trademark.

There is no citable Canadian case law addressing the issue of unauthorized use of trademarks as keywords. The case of Private Career Training Institutions v. Vancouver Career College considered a private college’s purchase of its competitor’s trademarks as keywords. In upholding the trial court’s conclusion that there was no liability, the appeal court decided the outcome depended upon a bylaw governing private colleges rather than trademark law. The lack of Canadian jurisprudence introduces even more uncertainty into the decision of whether to commence legal proceedings if a complaint cannot be resolved amicably.

Finally, the trademark owner should consider aggressively bidding to purchase its own trademarks as keywords for all search engines.

Tim Bourne practises trademark law with Ridout & Maybee LLP's Ottawa office and has a special interest in the unauthorized online use of trademarks.

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