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Slides from 24th IPSANZ Annual Conference, Sheraton Noosa, 11 September 2010

Slides from 24th IPSANZ Annual Conference, Sheraton Noosa, 11 September 2010

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  • 1. OF KEYWORDS, ADWORDS AND TRADE MARK INFRINGERS
    • Warwick A Rothnie
    • 24th Annual IPSANZ Conference
    • 11 September 2010
  • 2. 24th IPSANZ Annual Conference © ipwars 2010
  • 3. 24th IPSANZ Annual Conference © ipwars 2010
  • 4.
    • <title>Circle On Cavill : Surfers Paradise Apartments Gold Coast</title>
    • <meta name&quot;=description&quot; content=&quot;Circle on Cavill Surfers Paradise, Circle on Cavill Apartments Surfers Paradise gold coast. Book directly with Circle on Cavill Surfers Paradise Gold Coast. &quot;>
    • < meta name=&quot;keywords&quot; content=&quot;Circle on Cavill, Circle on Cavill Apartments, Circle on Cavill surfers paradise, Circle on Cavill Apartments gold coast, Circle Apartments.&quot;>
    • Mantra v Tailly 86 IPR 19 at [42]
    24th IPSANZ Annual Conference © ipwars 2010
  • 5.  
  • 6.
    • 2 key requirements:
    • use of the sign in commerce
    • which is likely to cause confusion
    • Rescuecom v Google 562 F.3d 123 at 130 (2d cir 2009)
    24th IPSANZ Annual Conference © ipwars 2010
  • 7. Brookfield v West Coast 174 F.3d 1036, 1064 (9th Cir. 1999) 24th IPSANZ Annual Conference © ipwars 2010
  • 8.
    • What is important is not the duration of the confusion, it is the misappropriation of Promatek’s goodwill. Equitrac cannot unring the bell….
    • Promatek v Equitrac 300 F.3d 808, 811-12 (7th Cir. 2002)
    24th IPSANZ Annual Conference © ipwars 2010
  • 9. Use in commerce
    • here Google displays, offers, and sells Rescuecom’s mark to Google’s advertising customers
    • +
    • encourages the purchase of Rescuecom’s mark through its Keyword Suggestion Tool
    • Rescuecom 562 F.3d 123 at 129 (CA 2 2009)
    24th IPSANZ Annual Conference © ipwars 2010
  • 10. Likelihood of confusion
    • 4 cases so far
    • Rosetta Stone
            • intent to profit is not the same as intent to confuse
    • 5 instances out of 100,000 [or 100,000,000] hits
    • US$279 products
    • keywords were ‘functional’
    24th IPSANZ Annual Conference © ipwars 2010
  • 11.  
  • 12. In the course of trade
    • The defendant must be using the trade mark in the course of trade
    • Google was engaging in trade, but it was the advertiser, not Google, using the trade mark in the course of trade
    • Cases C-236, 237 and 238/08 Google France [2010] RPC 569 at [52] - [58], [104]]
    24th IPSANZ Annual Conference © ipwars 2010
  • 13. Liable to affect function
    • The ad suggests an economic link between the advertiser and the trade mark owner [89]
    24th IPSANZ Annual Conference © ipwars 2010
  • 14. or
    • So vague that
    • normally informed and reasonably attentive internet users are unable to determine
    • whether the advertiser is a third party or economically linked to the trade mark proprietor [90]
    24th IPSANZ Annual Conference © ipwars 2010
  • 15. 24th IPSANZ Annual Conference © ipwars 2010 via Austrotrabant
  • 16. eCommerce Directive
    • Intermediary service provider
    • is neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge or control of the data which it stores
      • being paid for the ad, not relevant
      • the role played by Google in the drafting of the commercial message which accompanies the advertising link or in the establishment or selection of keywords is relevant
    24th IPSANZ Annual Conference © ipwars 2010
  • 17. Does this help us?
    • Somewhat divergent approaches - plenty of scope for an autochthonous solution
    • In the course of trade
      • Reed Executive plc v Reed Business Information Ltd [2004] RPC 767
      • Directing or procuring
    • Likelihood of confusion
      • Intent to profit ≠ intent to confuse
      • ACCC v Google
    • Is it even use as a trade mark?
    24th IPSANZ Annual Conference © ipwars 2010
  • 18. http://ipwars.com 24th IPSANZ Annual Conference © ipwars 2010