Trademark case will offer Google adword protection, says Travlaw

A court case fought in Europe could give trademarked travel firms greater protection against rivals gaining unfair advantage in Google advertising, according to Travlaw.

The case brought against Marks & Spencer by Interflora resulted in a ruling from the European Courts of Justice last September that endorsed Google’s view that bidding on trademarked brands did not constitute an automatic infringement.

However the ECJ has referred back to domestic courts the issue of how to determine when firms are seeking to gain an unfair advantage above and beyond what could be considered genuine competition.

Interflora initiated legal proceedings in the UK High Court in 2008 after Marks  & Spencer was found to be bidding on its name for paid search advertising that did not include a direct reference to the brand in its advertising.

The case hinged on whether Marks & Spencer was gaining an unfair advantage by its adverts appearing in search results when the consumer had searched specifically for Interflora.

Farina Azam, trainee solicitor at Travlaw, told the Travlaw Big Tent event in London last week that the case could provide legal recourse for companies wanting to protect their brands online.

“There’s nothing more annoying than Googling yourself and finding sponsored ads for your competitors all over the screen.

“Interflora and M&S are essentially arguing over Google adwords. The legal position is that where you have a registered trademark, if you find your competitor is bidding and you can show they are gaining an unfair advantage there is potentially an argument for unfair infringement.

“We act for a number of firms on this issue,” added Azam, who recommended all travel firms investigate trademarking, saying it was the cheapest way to protect their brands.

Although not all brands can be trademarked if they are too generic, Azam said many can be even if they are not distinctive but have been in use for a long period.

The most recent example of firms looking to gain an advantage at the expense of a rival on Google was when Lowcostholidays ran advertising on Thomas Cook’s name as the travel giant’s financial woes became public.

Although the Interflora case is seen as setting a new legal precedent, trademarked brands already have a little-known way of protecting themselves on Google, Azam said.

On request the search engine will issue Third Party Authorisation Forms which prevent rivals bidding on their names.

Azam said trademarking also allows firms to combat domain name squatting. “What people do is register your brand and they will try to sell it back to you at an inflated price,” she said.

“Where that happens they will run sponsored ads for your competitors and wait for you to approach them or they will approach you.

“Where you have a registered trademark you can argue that is an infringement of your trademark. We have been able to get those domains back without paying anything.”

This is particularly important in relation to .xxx domain names usually associated with adult sites.

“With .xxx domains, trademarking gives you the ability to block the domain that corresponds with your brand. If you don’t do that there is a chance a .xxx domain can be launched on your trademark. If you have a registered trademark you can argue there is a potential infringement.

“You have the site closed down or registered back to you.”

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