SEM

Search taps directly into the mindset of a person, that is why it is so powerful. If someone searches for Volkswagen, does it mean they are searching for cars in general? Maybe.

Should other ads that are relevant such as car insurance be allowed to be shown? Potentially.

Basically the Trademark issue is an argument about ontology, what is related to what, and what should be allowed to be shown when someone is thinking about a particular thing.

It is not made any easier for the search engines or advertisers by the fact that trademark holders fall into two camps, those that allow or encourage controlled trademark use, and those that just don't want their trademarks used at all. How do you police that?

In the UK it has been made even more complicated this month by the fact that the trademark forms no longer differentiate between textual or graphical trademarks. Meaning that whether or not something is misuse has become more subjective.

Lawyer

Broadly speaking you are right and you are right about the trade mark application forms changing however in terms of the legal effect I don't think there will be any because the law is the same.

So use of a third party's trade mark will be an infringement if it is without the owners consent and is in the course of trade. Whether the registered mark is stylized or not might affect whether the infringement is under Section 10(1) or Section 10(2) of the Trade Marks Act 1994 (which requires confusion or a likelihood of confusion between the user of the mark and the owner before infringement can exist) but I think this is unlikely unless the mark is distinguishable because of the particular stylisation given to it. Essentially any plain text representation of a mark should be infringed by any other plain text version of the mark - regardless of the font.
 In the world of search engine optimisation using a competitor's brand without proper reason as a key word would therefore result in TM infringement regardless of how the TM was represented (in terms of font style) on the TM form.

That is not to say that any use of a competitors brand is always unlawful or infringement - if it was in accordance with honest trade practices such as to say that "Audi (the client) was the runner up in the What Car, Car of the Year Awards where the winner was Volkswagen".

Also dealing with your specific point if the car insurance company specialized in VW insurance then there is case law to support the notion that it is allowed to use the VW mark in that context. It must of course be fair and in accordance with honest practices. Indeed the 1994 Act expressly states that there is no infringement of a registered trade mark where it is used honestly to identify the goods or services of the mark’s owner or licensee.

SEM

The key point is that the use of a keyphrase has no font or other stylisation, it is actually completely hidden. The meaning is more important than the word. However it is still used as raw text.

The way I see it traditionally you may have had one trademark holder that had a 'textual' trademark, which was indicated as such. The search engine could just look for these textual marks and filter them – fine everyone is happy.

Stylised marks surely cannot be counted in this argument at all, and as the search engines can no longer tell the difference between textual and stylised how can the law even be enforced?

I would argue in the UK the patent office has made any enforcement of rules against search engines impossible, as they have put the impetus on an independent third party (the search engines) to try and guess what form the trademark is.

Lawyer

You are making sense - the thing is that whether a trade mark is registered in text only or not text only form there is a risk of trade mark infringement because infringement occurs through the use of the same or similar mark in relation to the same or similar goods, where in the case of similar marks or goods there exists a likelihood of confusion. 

So the point is not really a technical one about the minutiae of the registration but a more general one is the word registered the same or similar to the word used.

SEM

Didn't lawyers in the UK rule that it was OK to use a competitors keyphrases within the Meta Data of a page. Which sets a precedent over here.

I was at the trademark seminar at Search Engine Strategies (UK) and the panel knew of a case in the UK which permitted use of trademarks in Meta Tags because they are not seen on the screen - I think we are the only country where this has happened.

One of the key debates this hinges on is that if the trademark isn't actually displayed in the ad copy itself how can it be an infringement under trademark law?

Lawyer

I think there is some confusion here - the panel is not wholly correct and as far as I am aware there is no case that "permits use of trade marks in Meta Tags" generally. 

The Case they might be thinking of is Reed Executive Plc and Others v Reed Business Information Limited and others available at:
http://www.courtservice.gov.uk/judgmentsfiles/j2349/reed-v-reed.htm. 

In particular the Judge raises some questions at paragraphs 143 onwards - including that "invisible" trade mark use might not be trade mark use. However no definitive ruling of general applicability was or could made on the point because the case was not properly pleaded and the Reed case turned on its particular facts.

The definitive point is that whether there is trade mark infringement must be determined globally taking all the factors pertaining to the use of the mark into consideration. 

So, yes "Reed v Reed" does suggest invisible trade mark use i.e in meta tags can in some circumstances avoid being infringing use but only where the circumstances would affect the global appreciation of the marks. The use must be considered with visible uses of the same marks on the associated web sites and, I would say, with the visiuble uses of the same mark on the search results page (i.e in the “search” bar).

The case also deals with the issue of "confusion". Because use of similar marks / similar goods requires confusion to be proved for there to be trade mark infringement and because the “global appreciation test” must be applied and both visible and invisible use of a mark must be taken into account, if the party using the similar mark can show that its  visible use would not mean that customers did not think there was an association or economic connection with the trade mark owner then it would be arguable that there is no trade mark infringement.

So in that sense using a mark similar to that registered may not in itself be infringement. However for the reasons explained previously the presentation of the mark on the register will probably not help SEO companies and advertisers.

Every case turns on its facts and if someone used your trademark in its meta tags I think that would be trade mark infringement. Even if the mark was registered with today's forms. The fact that a mark is represented in a particular font should not stop it being considered identical to the mark used (if it is simple font) and so the evidence of confusion would become irrelevant - the question would be - "is it trade mark use". The judge in the Reed case was very clear his decision would have been different if the defendant was considered to be using a mark which was identical to "REED" (the registered mark). 

Also his decision might have been different if the case was properly pleaded by the claimant (which it wasn't).

So in summary it is very dangerous to simply say using trademarks in meta tags is allowed.

However, because it is possible that meta tags aren't infringements in certain circumstances (BUT ONLY IN CERTAIN CIRCUMSTANCES) SEO companies can use it to their advantage. The example you used of cars and car insurance is a good one.

If you or your client were a BMW car dealership and simply added Audi to the meta data or took the key word then you would be using an identical mark for identical goods and confusion would be irrelevant and I would say that the search results which include you or your client would quite probably be held to be infringing.

However if you were a company dealing in insurance and you did the same thing then unless Audi have a registration for insurance it would have to show confusion and the global appreciation test might save you.

SEM

So what we agree on is that short of stopping advertising against all keyphrases that are trademarks or even similar to trademarks, of which there is now no easy way to find out and probably wont be soon. Then really it is up to the advertiser to decide themselves, and the trademark holder to argue it with the advertiser if they want the search ads pulled.

How could a search engine afford to go through the trademark checking and proving case against millions of keyphrases. It would be almost impossible for the search engines to try and police it themselves short of stopping the paid search altogether.

I don’t see this as an option because so many businesses, trademark holders included depend on it as a valuable source of business.

You could also put a lot of impetus on the trademark holders to improve their own search marketing. If I am looking for a specific brand related product or even brand itself and its not there I would want to see similar and even competitive results. It’s like going into Pizza Express and asking for Coke only to be told “we don’t do Coke is Pepsi OK” did the sales person infringe Cokes trademark?

Obviously there is no clear solution.

Lawyer

I do think that the advertiser should be principally accountable. However once the search engine is made aware of the problem and the fact that infringement does or might exist then it must also be accountable. If it has sold the key word or used the meta data then it is involved – it can’t simply turn its back on its responsibilities at that point then and it can’t simply stick its fingers in its ears and pretend it is not listening either.

However search engines are in an invidious position and cannot adopt a blanket approach. Many businesses and individuals have legitimate rights to use the same words and marks. In the US a court held that former Playboy Bunny Girl could use “Playboy” in her web site and I am sure that if Harrison Ford wanted to sell his car through his web site it would be impossible for Ford Motor company to stop him using his own name.

The long and short of it is that Trade Marks law is established to deal with circumstances where a third party unfairly uses another persons brand. There are certain ways in which a third party can do so fairly and the courts will decide those cases one way (as in Reed). Where there is impropriety however and the use isn’t fair I am sure they will find another way.

Having said all of this there are some very good arguments both ways and I have no doubt that if I was asked to defend a client in these circumstances I particularly like the analogy of someone going into Pizza Express and asking for a Coke only to be told “we don’t do Coke is Pepsi OK”. Your argument on ontology works here. Coke is wanted – Pepsi will probably do however the question is are Google allowed to say “you asked for Coke, we can give you information on Coke but would you also like information on Pepsi?” and is Pepsi allowed to pay Google to do so.

It happens in supermarkets where the shelves are stacked so that the own brand beans are next to the Heinz or HP beans.

I think the difference is that people there are just searching for beans and are not searching by brand.