This document discusses several key court cases related to the use of trademarks in online advertising and search engines: 1) The Google France Decision held that an advertiser's purchase of trademarks as keywords to trigger ads is a "use in the course of trade" but the search engine hosting the ads is not liable as it does not directly use the trademarks. 2) In Cosmetic Warriors v Amazon, the court found that two of Amazon's ads using trademarks as keywords did not confuse consumers about the ad's source, but one ad using the trademark in copy text did affect the trademark's origin function. 3) Interflora v M&S initially found M&S ads triggered by Interflora's trademark confused

1. Len Mancini June 2015
Use of TM’s Online

2. Use of TM’s Online
• The use of TM’s in keywords
and metatags/HTML has been
particularly controversial since
1999.
• First time in 11 years that
Google is not a party to a suit
in this area.

3. Use of TM’s Online

4. Use of TM’s Online
Are PANADOL’s trade marks being
infringed by the chemist or the brand
owner placed adjacent to the
Panadol?
No

5. Use of TM’s Online

6. Use of TM’s Online

7. Use of TM’s Online

8. Use of TM’s Online
Are PANADOL’s trade marks
being infringed by the chemist
that purchased the PANADOL
keyword or alternatively is
Google liable for infringement ?

9. Use of TM’s Online
Should there be any difference
between the outcome of the
bricks and mortar example and
the online example?

10. Brookfield Communications v
West Coast Entertainment Corp
Metatags Case

11. Brookfield Communications v
West Coast Entertainment Corp
Metatags Case
Respondent WCE used “MOVIEBUFF” in its
invisible HTML code
Judge considered whether this could
amount to TM infringement.

12. Brookfield Communications v
West Coast Entertainment Corp
Metatags Case
Held that search engine might read the code
and put the website in the list of results for
searches conducted with the word in
question.
But does that amount to actionable
infringement?

13. Brookfield Communications v
West Coast Entertainment Corp
The judge said:
West Coast's use of "moviebuff.com" in metatags will still result in what is known as initial
interest confusion. Web surfers looking for Brookfield's "MovieBuff" products who are
taken by a search engine to "westcoastvideo.com" will find a database similar enough to
"MovieBuff" such that a sizeable number of consumers who were originally looking for
Brookfield's product will simply decide to utilize West Coast's offerings instead. Although
there is no source confusion in the sense that consumers know they are patronizing West
Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense
that, by using "moviebuff.com" or "moviebuff" to divert people looking for "MovieBuff" to
its web site, West Coast improperly benefits from the goodwill
that Brookfield developed in its mark.

14. Brookfield Communications v
West Coast Entertainment Corp
West Coast
Video Store
Exit 7

15. Brookfield Communications v
West Coast Entertainment Corp
BLOCKBUSTER VIDEO
STORE

16. Brookfield Communications v
West Coast Entertainment Corp
• This decision resulted in some pretty ordinary jurisprudence.
• Why? because Brookfield bypassed the well regarded multi factor
Sleekcraft test for confusion used widely in US TM law and replaced
it with a missapropriation of goodwill test.
• Successive Judges tried to harmonise the initial interest confusion
test with existing multi factor Sleekcraft test used widely in US TM
law – and failed.

17. Playboy v Netscape 2004

18. Playboy v Netscape 2004
• Did not appreciate
Netscape providing
searchers with
alternative adult
entertainment
options
• Netscape received
advertising fees from
the alternative
content providers.
• Content providers
did not however
select the keyword,
Netscape did.

19. Playboy v Netscape 2004
• The decision was, like Brookfield, not a final decision.
• The majority affirmed Brookfield and that initial interest confusion
doctrine was available for Playboy.
• Court held that Playboy may also be able to establish regular
infringement where there was no source of identification on the
banner ad and where the confusion may persist more than just
initially.
• Pointed to an expert report that found that a majority of consumers
thought the sponsored ads were from Playboy or was otherwise
associated with their owners.

20. The Early Google
Adwords Cases

21. 1-800 Contacts, Inc. v. WhenU.com
and Vision Direct, Inc. 2005
keyword

22. 1-800 Contacts, Inc. v. WhenU.com
and Vision Direct, Inc. 2005
• Recognised the real world equivalent examples:
Indeed, it is routine for vendors to seek specific "product placement" in
retail stores precisely to capitalize on their competitors' name
recognition. For example, a drug store typically places its own store-
brand generic products next to the trademarked products they
emulate in order to induce a customer who has specifically sought
out the trademarked product to consider the store's less-expensive
alternative. WhenU employs this same marketing strategy by
informing C-users who have sought out a specific trademarked
product about available coupons, discounts, or alternative products
that may be of interest to them.

23. 1-800 Contacts, Inc. v. WhenU.com
and Vision Direct, Inc. 2005
• This was a pinnacle case that put the
requirement for trade mark use as a threshold
matter and not to be overlooked or
overshadowed by any initial confusion:
“Not only are "use," "in commerce," and "likelihood of confusion" three
distinct elements of a trademark infringement claim, but "use" must
be decided as a threshold matter because, while any number of
activities may be "in commerce" or create a likelihood of confusion,
no such activity is actionable under the Lanham Act absent the
"use" of a trademark. 15 U.S.C.”

24. 1-800 Contacts, Inc. v. WhenU.com
and Vision Direct, Inc. 2005
• S&L Vitamins v Australian Gold Inc (USA) 2007
& Designer skin llc v S&L Vitamins Inc, et al.
(USA) 2008 were two such cases in which the 1-
800 decision stood for the proposition that:
“there is no trademark “use” where a defendant does not
place the trademark on any product, good or service and
where it is not used in a way that would indicate source
or origin.

25. Position in USA as at 2008
• The S&L Vitamins cases showed that you can use TM as keyword
triggers for sponsored links that triggers ads for websites that sell
TM owner product or competitor product together with TM owner’s
product.
• In Hazmik it was found the ads triggered were infringing as they
incorporated the TM in the ad copy. Still, case stands for the
proposition that using the TM as a keyword not in and of itself
infringing.
• The courts were edging their way towards full acceptance of the
practice. This did not come for some time.
• In the meantime….

26. Can we allow Google
to come to France
and engorge itself on
advertising fees that
diminish French
profits and steals
their hard earned
reputation
NON!
ECJ

27. Google France Decision
• The Google France Decision can be a reference to:
• 22 September 2009 Opinion of the Advocate General of European Court of
Justice in three separate matters:
• Or the decision of the Grand Chamber of the European Court of Justice in
respect of the same matters.
Google France
Google Inc.
v
Louis Vuitton
Malletier
Google France
v
Viaticum
Luteciel
Google France
v
CNRRH
Pierre‑Alexis
Thonet
Bruno Raboin
Tiger, a
franchisee of
Unicis

28. Google France Decision
Facts: Google and Louis Vuitton Malletier SA
KEYWORDS ADVERTISMENT
Louis Vuitton Contained references to TM and
Louis Vuitton replica sites linked to have been Louis
Vuitton imitation sources of counterfeit LV
Louis Vuitton copy products

29. Google France Decision
Facts: Google and Bruno Rabon and Tiger SARL
KEYWORDS ADVERTISMENT
Eurochallenges TM not used in copy. Not noted
but linked sites offered identical
or similar products as those by
the TM owners

30. Google France Decision
Facts: Google and Viaticum SA and Lutieciel SARL
KEYWORDS ADVERTISMENT
BDV TM not used in copy but linked
Bourse des vols sites offered identical or similar
Bourse de voyages products as those by the TM
owners

31. Google France Decision
• The Advocate General Said:
• This question boils down to whether there is a use in the course of
trade.
• ….the selection of the keywords is not a commercial activity, but a
private use …...
• Again, it must be remembered that the advertisers’ selection in
AdWords of keywords which correspond to trade marks can take
place for many legitimate purposes (purely descriptive uses,
comparative advertising, product reviews, and so on). The
consequence of considering that such selection constitutes, in itself,
a trade mark infringement would be to preclude all those legitimate
uses. (75)

32. Google France Decision
• Nor are trade mark proprietors left totally defenceless with respect
to the selection of keywords which correspond to their trade marks.
They can intervene whenever the effects are truly harmful, that is to
say, when the ads are displayed to internet users.
• Although the Court has not been asked about the use of the trade
mark in the ads, it should be stated that trade mark proprietors can
prevent such use if it involves a risk of confusion. Even if no such
risk arises, that use can be prevented if it affects other functions of
the trade mark, such as those related to the protection of innovation
and investment.
• 154. As I have perhaps emphasised almost to exhaustion in this
Opinion, it is important not to allow the legitimate purpose of
preventing certain trade mark infringements to lead all trade mark
uses to be prohibited in the context of cyberspace.

33. Google France Decision
• Held/Concluded on the questions:
• 1. The selection of a TM keyword by an advertiser to trigger
advertisements linking to a site operated by the advertiser for the
purpose of offering for sale goods or services and which reproduces
or imitates the TM covering similar or identical goods, without the
authorisation of the TM owner does not constitute in itself an
infringement of the TM owners exclusive rights.
• A TM owner may not prevent a Google type service making
keywords available that reproduce or imitate the TM for advertising
links to sides created and displayed on the basis of those keywords.
• In the event the TM have a reputation the TM owner cannot argue
dilution.

34. Google France Decision
The Court of the ECJ held:
Test: the proprietor of a trade mark is entitled to prohibit a third party
from using a sign identical with that trade mark when
i)that use is in the course of trade,
ii)is in relation to goods or services which are identical with, or similar
to, those for which that trade mark is registered, and
iii)affects, or is liable to affect, the functions of the trade mark.

35. Google France Decision
Leg 1. Use in the course of trade
Applied: The advertiser purchasing the referencing service and
choosing as a keyword a sign identical with another’s trade mark, it
must be held that that advertiser is using that sign. From the
advertiser’s point of view, the selection of a keyword identical with a
trade mark has the object and effect of displaying an advertising link to
the site on which he offers his goods or services for sale. Since the
sign selected as a keyword is the means used to trigger that ad
display, it cannot be disputed that the advertiser indeed uses it in the
context of commercial activity and not as a private matter. IS USE
Although it is clear that Google operates ‘in the course of trade’ when
it permits advertisers to select, as keywords, signs identical with trade
marks, stores those signs and displays its clients’ ads on the basis
thereof, it does not follow, however, from those factors that that service
provider itself ‘uses’ those signs. NO USE – NOT LIABLE

36. Google France Decision
Leg 2 – In relation to goods and services
•the Court held that the use made by the advertiser of a sign identical
with the trade mark of a competitor in order that internet users become
aware not only of the goods or services offered by that competitor but
also of those of the advertiser constitutes a use in relation to the goods
or services of that advertisement
•even in cases in which the advertiser does not seek, by its use, as a
keyword, of a sign identical with the trade mark, to present its goods or
services to internet users as an alternative to the goods or services of
the proprietor of the trade mark but, on the contrary, seeks to mislead
internet users as to the origin of its goods or services by making them
believe that they originate from the proprietor of the trade mark or from
an undertaking economically connected to it, there is use ‘in relation to
goods or services’.

37. Google France Decision
Leg 3 – affects the functions of the trade mark
• Those functions include not only the essential function of the trade mark, which is to
guarantee to consumers the origin of the goods or services (‘the function of indicating
origin’), but also its other functions, in particular that of guaranteeing the quality of the
goods or services in question and those of communication, investment or advertising
•The function of indicating the origin of the mark is adversely affected if the ad does not
enable normally informed and reasonably attentive internet users, or enables them only
with difficulty, to ascertain whether the goods or services referred to by the ad originate
from the proprietor of the trade mark or an undertaking economically connected to it or,
on the contrary, originate from a third party
•In the case where the ad, while not suggesting the existence of an economic link, is
vague to such an extent on the origin of the goods or services at issue that normally
informed and reasonably attentive internet users are unable to determine, on the basis of
the advertising link and the commercial message attached thereto, whether the advertiser
is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically
linked to that proprietor, the conclusion must also be that there is an adverse effect on
that function of the trade mark.

38. Google France Decision
End Result in 2010: adwords OK in EU
•the proprietor of a trade mark is entitled to prohibit an advertiser from
advertising, on the basis of a keyword identical with that trade mark which
that advertiser has, without the consent of the proprietor, selected in
connection with an internet referencing service, goods or services identical
with those for which that mark is registered, in the case where that
advertisement does not enable an average internet user, or enables that
user only with difficulty, to ascertain whether the goods or services referred
to therein originate from the proprietor of the trade mark or an undertaking
economically connected to it or, on the contrary, originate from a third
party.
•an internet referencing service provider which stores, as a keyword, a sign
identical with a trade mark and organises the display of advertisements on
the basis of that keyword does not use that sign.

39. Cosmetic Warriors and Lush
Limited v Amazon.co.uk

40. Cosmetic Warriors and Lush
Limited v Amazon.co.uk
The TM: LUSH
The GOOGLE keywords:
Lush Soap at Amazon.co.uk
www.amazon.co.uk/lush+soap
amazon.co.uk is rated *****
Low prices on Lush Soap
Free UK Delivery on Amazon Orders
AND
Bomb Bath at Amazon.co.uk
www.amazon.co.uk/bomb+bath
amazon.co.uk is rated *****
Low prices on Bomb Bath
Free UK Delivery on Amazon Orders.

41. Cosmetic Warriors and Lush
Limited v Amazon.co.uk
Examined all three instances of keyword for infringement by looking for where the
average consumer may erroneously think that the goods advertised emanate from the
trade mark proprietor as such a finding would be a finding that the origin function of the
trade mark has been diminished or affected.
According to the court decision handed down on 10 Feb 2014:
1.The Ad with LUSH in the copy would have led the average consumer to expect to find
Lush soap available on the Amazon site and would expect to find it at a competitive price
2.With respect to the Bath Bomb ad - The average consumer could not reasonably fail to
appreciate that the Amazon ad was just another ad from a supplier offering similar
products to those requested by the internet searcher.
3.With respect to the Amazon site - where the consumer has been informed (from the
drop down menu) that Lush Bath Bombs are available, I do not consider that the average
consumer would ascertain without difficulty that the goods to which he was directed did
not originate from Lush.

42. Interflora Inc v Marks & Spencer

43. Interflora Inc v Marks & Spencer
Arnold J of the High Court found on 21 May 2013:
theM&S advertisements did not enable reasonably well informed and reasonably
attentive internet users, or enabled them only with difficulty, to ascertain whether the
service referred to in the advertisement originated from the proprietor of the TM. Held
that a significant proportion of the consumers were led to believe that the M&S service
was part of the interflora network which in turn had an adverse effect on the origin
function of the TM.
On 5 November 2014 – the appeal from this decision was handed down – The court the
population has moved on and has become more sophisticated. Hardly anyone would not
appreciate that sponsored links do not have any association with the TM owner. Given
that the judge found a majority of consumers would appreciate that there was no
association in any case, that would be enough to find non-infringement.
Said that there was nothing inherently objectionable about keyword advertising.

44. General Steel Domestic Sales LLC v Ethan Daniel
Chumley and Atlantic Building Systems LLC
• TM: GENERAL STEEL
• KEYWORD: GENERAL STEEL BUILDING
• THE ADS
General Steel buildings –Steel framed buildings |Armstrong Steel.. Checkout various Armstrong Steel
buildings –Building frames for your general steel buildings like commercial steel buildings,
industrial steel buildings. Www.armstrongsteelbuildings.com/steel-metal-building-frames.php
“General Steel Buildings www.ArmstrongSteelBuildings.com Price Your Building Online Or Let Us Do
It. Guaranteed Lowest Prices!”
Don’t Buy General Steel Without Pricing Armstrong First. Price a Steel Building in Minutes!
www.ArmstrongSteelBuildings.com,”“Before You Buy7General Price Armstrong Steel First
Guaranteed LowerPrices!www.ArmstrongSteelBuildings.com
General Steel Armstrong www.ArmstrongSteelBuildings.com Don’tBuy a General Steel Building
Without Pricing Armstrong First!”

45. General Steel Domestic Sales LLC v Ethan Daniel
Chumley and Atlantic Building Systems LLC
• The Court held that the mere purchase of a keyword is
not in and of itself sufficient to make a finding of TM
infringement. The text of the ads needed to be looked at
to see if they were misleading as to source or origin.
• The ads that said don’t buy General Steel buildings were
helpful as they would not be thought to have originated
with the TM owner.
• There were the other ads that just mentioned the words
GENERAL STEEL. The court probably could have found
such ads infringing but elected not to do this, saying that
the language was puzzling, but would not confuse as to
source.

46. EU AND US HARMONY

47. Australia and New Zealand
Cases involving keywords or invisible use of TM in HTML/
tags have been heard in Australia and New Zealand

48. Complete Technology Integrations Pty Ltd v Green Energy
Maanagement Solutions Pty Ltd 2011
• TM - CTI
• Involved the use of (1) sponsored links in Bing that
triggered Respondents ads, (2) TM in the ad copy, (3)
TM in the hidden HTML or metadata of the website.
• Held
• Re (3) Metatags are invisible to the ordinary internet user. The site they take
you too allegedly, is clearly not the site of the TM owner. It cannot,
therefore, be said that the use in a metatag of CTI’s Registered Trade
Marks is a use that indicates the origin of Green Energy’s services.
• Re (1/2) The use of CTI’s registered trade mark “CTI” in advertising on the
Bing search engine was also use of the sign “CTI” as a trade mark since the
use was as a “badge of origin”, which in the course of trade purported to
connect the advertised services with a particular trade source. - Not clear
whether use as a keyword alone would have been infringement.

49. Lift Shop Pty Ltd v Easy Living Home
Elevators
• First instance decision at the Fed Ct 20 Sept 2013
• use of a TM as a keyword and in ads was not in and of
itself TM infringement.
• Decision concentrated mainly on the titles of the ads:
Easy Living Lifts | Home Elevators | Lift Shop – Home Elevators ...
www.easy-living.com.au/ ▼
AND
Easy Living Lifts | Home Elevators | Lift Shop – Lift Shop
www.easy-living.com.au
• No separate examination of liability just for keyword trigger use of TM.
• Upheld on appeal that the ads did not infringe the LIFT SHOP trade mark.

50. Bob Jane Corporation Pty Ltd v ACN
149 801141 2013
• In this case a sign that was deceptively similar to the Registered TM was
used in ads and on websites. The TM was used as a keyword to trigger the
display of the ads that took you to the respondent’s website.
• Held “the use of marks in advertising on internet search engines will amount
to use as a trade mark”
• Didn’t look specifically into the liability for keyword use however

51. Intercity Group (NZ) Limited v
Nakedbus NZ Limited
• Decision handed down 12 February 2014.
• “These authorities show that the essential function of a trade mark is to guarantee to
the consumer the identity of the origin of the trade marked goods or services by
enabling that consumer to distinguish the goods or services from others which have a
different origin. With this in mind, I turn to whether, in relation to the keyword
“intercity” and variations, there has been a “use” in terms of s 89(2) by Nakedbus.
• The use of the keyword was by Nakedbus when it purchased that keyword prior to
the placement of its advertisement, and then by Google when, through its search
engine, it provided for the Nakedbus advertisement to appear when a consumer
keyed “intercity” into a computer. In such a situation, the use of the keyword by
Nakedbus and indeed Google was not seen by the consumer at all. As Mr Harris
observed, these actions were invisible to everyone except Google and the advertiser.
If the “use” could not be seen by the consumer it could not be “taken as” anything, let
alone “taken as being used as a trade mark”.
• The court did ultimately hold, however that the triggered ads were in fact infringing.

52. Tasman Insulation New Zealand
Ltd v Knauf Insulation Ltd
• Decided 12 May 2014.
• Case involved a website being used in New Zealand
• IN NZ TM for BATT for insulatuion batts (apparently not descriptive
in NZ).
• One photo had the following invisible HTML code on the site: “Batt
%20MastaBag.jpg”
• Held: I consider that it is proper to construe invisible use of a
registered trade mark by the use of a metatag, as occurred in the
circumstances of the present case (where the mark can be
accessed and viewed by an informed internet user), as use as a
trade mark. Consequently I do not consider that what has been
described as the invisible use in the HTML code has the
consequence that the s 89(2) threshold is not crossed.

53. Tasman Insulation New Zealand
Ltd v Knauf Insulation Ltd
• Decided 12 May 2014.
• Case involved a website being used in New Zealand
• IN NZ TM for BATT for insulatuion batts (apparently not descriptive
in NZ).
• One photo had the following invisible HTML code on the site: “Batt
%20MastaBag.jpg”
• Held: I consider that it is proper to construe invisible use of a
registered trade mark by the use of a metatag, as occurred in the
circumstances of the present case (where the mark can be
accessed and viewed by an informed internet user), as use as a
trade mark. Consequently I do not consider that what has been
described as the invisible use in the HTML code has the
consequence that the s 89(2) threshold is not crossed.

54. Tasman Insulation New Zealand
Ltd v Knauf Insulation Ltd
• 95 No infringement for honest practices
• A person does not infringe a registered trade mark if, in accordance
with honest practices in industrial or commercial matters, the person
uses—
• (c) a sign to indicate—
• (i) the kind, quality, quantity, intended purpose, value, geographical
origin, or other characteristic of goods or services; or
• HELD: To my mind the defendants’ use of those words is simply
as identification of the product itself like, for example, “wine” or “car”.
I do not consider that the defendants’ use of those words
communicates any meaningful information about the “kind” of
product or the “intended purpose” of the product.

55. POSITION IN AUSTRALIA
• Country with the least well developed law of use of a TM
as a keyword would be Australia.
• Both Lift Shop and Complete Technology cases don’t
deal with the issue of TK as Keyword as precisely as the
other countries and cases discussed.
• However I suspect from reading Liftshop, Complete
Technology and the Google v ACCC cases, as well as
the Inter City case, that an Australian Court would find
that the use of a TM as a keyword would not infringe the
TM absent some other consideration.

56. Thank you
• www.cullens.com.au
• Brisbane
• Gold Coast
• Townsville