IAB Search Council Trademark Use in PPC Search Mike Teasdale | Planning Director | Harvest Digital

Paid search is a £2 billion industry in the UK

More than half of all PPC spending goes on branded search terms Ford Ford Escort Ford Ka www ford com Ford website Source: www.atlassolutions.com

So trademark protection is a big deal

IAB site has a detailed section on trademarks and search http://www.iabuk.net/en/1/searchmarketingtrademarks.html

In a nutshell Google, Microsoft and Yahoo all require advertisers to comply with trademark law when using their services.

Google, Microsoft and Yahoo all require advertisers to comply with trademark law when using their services.

In a nutshell Their policies and terms and conditions state that the use and monitoring of trademarks is currently the responsibility of you, the advertiser

Their policies and terms and conditions state that the use and monitoring of trademarks is currently the responsibility of you, the advertiser

Trademark infringements are not Google’s problem Our AdWords Terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. They make it clear that advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements.

Our AdWords Terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. They make it clear that advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements.

Trademark infringements are not Google’s problem Because Google is not a third-party arbiter, we encourage trademark owners to resolve their disputes directly with the advertisers , particularly because the advertisers may have similar ads running via other advertising programs.

Because Google is not a third-party arbiter, we encourage trademark owners to resolve their disputes directly with the advertisers , particularly because the advertisers may have similar ads running via other advertising programs.

From 5 May 2008 Google will no longer enforce trademark restrictions on keywords Google is dedicated to providing relevant advertising to our users, advertisers, and publishers. Accordingly, our trademark policy aims to provide users with choices relevant to their keywords. But they will investigate trademark violations in ad text At the same time, we investigate trademark violations in ad text both as a courtesy to the trademark owner and to ensure that ads are clear to users.

Google will no longer enforce trademark restrictions on keywords

Google is dedicated to providing relevant advertising to our users, advertisers, and publishers. Accordingly, our trademark policy aims to provide users with choices relevant to their keywords.

But they will investigate trademark violations in ad text

At the same time, we investigate trademark violations in ad text both as a courtesy to the trademark owner and to ensure that ads are clear to users.

Return to the wild west?

But a search for “HSBC” shows no PPC ads

A search for “Tesco” shows no PPC ads

Impact of 5/5 Some UK sectors are highly competitive (finance & travel) Aggregator brands and affiliates are most frequently involved in competitive bidding However, many big brands show NO ppc activity on their brands – i.e. Tesco and HSBC. 42 out of 100 brands are NOT bidding on their own brand terms http://www.harvestdigital.com/insight

Some UK sectors are highly competitive (finance & travel)

Aggregator brands and affiliates are most frequently involved in competitive bidding

However, many big brands show NO ppc activity on their brands – i.e. Tesco and HSBC.

42 out of 100 brands are NOT bidding on their own brand terms

http://www.harvestdigital.com/insight

Impact of 5/5 IPA research suggests that brands are “paying more and getting less” Average cost of brand traffic has increased from 16p to 26p Average CTR has gone down from 28.9% to 20.9% http://www.ipa.co.uk/Content/Brands-pay-Google-more-for-less

IPA research suggests that brands are “paying more and getting less”

Average cost of brand traffic has increased from 16p to 26p

Average CTR has gone down from 28.9% to 20.9%

The legal position in the UK March 2008 – Wilson (Mr Spicy) versus Yahoo! Mr Spicy loses, but case not conclusive as Yahoo! had accepted ads triggered by “spicy”, not “Mr Spicy” December 2008 – Interflora versus Marks and Spencer / Flowers Direct Case is brought under sections 10(1) and 10(3) of the Trade Marks Act 1994 The use of its marks enables M&S and Flowers Direct "to free-ride upon the fame of the Trade Marks, thus conferring upon themselves and/or their goods or services an unfair advantage over the Claimants and/or other traders, and/or members of the public."

March 2008 – Wilson (Mr Spicy) versus Yahoo!

Mr Spicy loses, but case not conclusive as Yahoo! had accepted ads triggered by “spicy”, not “Mr Spicy”

December 2008 – Interflora versus Marks and Spencer / Flowers Direct

Case is brought under sections 10(1) and 10(3) of the Trade Marks Act 1994

The use of its marks enables M&S and Flowers Direct "to free-ride upon the fame of the Trade Marks, thus conferring upon themselves and/or their goods or services an unfair advantage over the Claimants and/or other traders, and/or members of the public."

The legal position in Europe In Germany In January 2009, the German Federal Supreme Court (BGH) referred the following question to the ECJ: “ Does the use of a third party’s trade mark as a keyword/adword on identical goods/services constitute trade mark infringement under the [Trade Marks] Directive?” The German court’s question arose from the Bananabay case, in which the claimant took action for trade mark infringement against its competitor’s use of its mark as a keyword. The BGH will not be able to rule on this case until it has received the ECJ’s guidance. In France In May 2008, the French courts referred several questions to the ECJ from a case where Louis Vuitton accused Google of infringing its trade marks. The lower French courts had found Google liable for this, but Google appealed. The highest national court decided to ask the ECJ whether Google could be liable for allowing advertisers to register another company’s trade mark as a keyword.

In Germany

In January 2009, the German Federal Supreme Court (BGH) referred the following question to the ECJ:

“ Does the use of a third party’s trade mark as a keyword/adword on identical goods/services constitute trade mark infringement under the [Trade Marks] Directive?”

The German court’s question arose from the Bananabay case, in which the claimant took action for trade mark infringement against its competitor’s use of its mark as a keyword. The BGH will not be able to rule on this case until it has received the ECJ’s guidance.

In France

In May 2008, the French courts referred several questions to the ECJ from a case where Louis Vuitton accused Google of infringing its trade marks. The lower French courts had found Google liable for this, but Google appealed. The highest national court decided to ask the ECJ whether Google could be liable for allowing advertisers to register another company’s trade mark as a keyword.

Meanwhile in the real world

Working within current guidelines Be Wiser bids on “Sheila’s Wheels” 2. Trademark not mentioned in ad text (directly) but is in display URL (which is not policed by Google)

Be Wiser bids on “Sheila’s Wheels”

2. Trademark not mentioned in ad text (directly) but is in display URL (which is not policed by Google)

Working within current guidelines 3. Quality score still applies – brand term is used in title tag, headline and body copy of the landing page

3. Quality score still applies – brand term is used in title tag, headline and body copy of the landing page

To conclude All the search engines place responsibility for trademark violations on the advertiser. The courts may not agree! Keep a close eye on the Interflora case

All the search engines place responsibility for trademark violations on the advertiser.

The courts may not agree!

Keep a close eye on the Interflora case

Photo Credits http://flickr.com/photos/superrabbit/319538244/ http://flickr.com/photos/stabilo-boss/93136022/ http://flickr.com/photos/28556257@N00/362568969/ http://flickr.com/photos/44124324682@N01/274957/ Contact details [email_address] Blog: www.indolent.com

http://flickr.com/photos/superrabbit/319538244/

http://flickr.com/photos/stabilo-boss/93136022/

http://flickr.com/photos/28556257@N00/362568969/

http://flickr.com/photos/44124324682@N01/274957/