Google Trademarks Policy and the Threat of Legal action in the UK

UK retailers are reportedly considering taking legal action against Google, following changes to its trademarks policy in the UK and Ireland.

These changes, which took effect on 5 May 2008, allow advertisers to use any keywords which are relevant to their business and the interests of Google users (which I tend to think counts for most of us).

The crucial change is Google’s statement that “we will no longer review a term corresponding to the trademarked term as a keyword trigger”.

 Roughly translated, this appears to mean that you can use any trademark term you like as a keyword, whether it belongs to a competitor or not and it lifts Google's ban on restrictions that prevented companies from being able to bid for trademarks, as keywords.

 In its Policy Revision Statement Google asks the question (in an FAQ style):

 “Does this mean that I can now use trademark terms as keywords?”

 It responds:

“Google in not in a position to make recommendations regarding the use of terms corresponding to trade marks. If you have further questions, we encourage you to contact your legal counsel and consult the Adwords Terms and Conditions”.

I think I need to come back to the complexities of Google’s position and its relationship with other people's trademarks, but it’s safe to say they have taken legal advice and they are quoted in The Lawyer article as being confident of their position.

My assumption is that Google would argue that a registered trade mark is not infringed by their use of the trademark as a keyword, because Google is not actually infringing on the mark itself. It’s simply acting as a facilitator. Google is not actually competing against the trade mark owners, and so arguably it’s not taking advantage of a trade mark, which may have a reputation and status, in the way that a direct competitor might.

Of course, the natural effect of using trade marks as key words is that they will cost a great deal more than “mere” keywords i.e. search phrases, and there may be arguments about Google taking advantage of trade marks there. EIther way, it's a fascinating develpment and one worth following, especially if the likes of lastminute.com actually go ahead and issue proceedings.

Comments

[Andra]

Good for people to know.