The world of marketing may little note, but long find itself remembering, an obscure judgement handed down by the Court of Justice of the European Union today.
It concerns the endemic practice of buying someone else’s brand name (or, more specifically, trademark) as a search term and then having all resulting enquiries directed, heretofore quite legally, towards your own enterprise. The practice is enshrined in such services as Google AdWords.
A good example of the wheeze in action is Virgin Media. Tee’d up for a mega-marketing launch back in 2006, it was mortified to discover that its principal rival, BSkyB, had bought up all Google search references to the VM brand name and was redirecting any interest to Sky.
Marks & Spencer sought to pull off a similar stunt when it “bought” the Interflora AdWord search term in 2009, with the intention of substituting its own online flower shop every time an internet user searched for “interflora” on Google.
Sadly for M&S, Interflora had a sense of humour loss and sued in the English law courts – which referred the matter to the supreme jurisdiction of the CJEU.
Well, the ruling has come in and it’s not going to be to M&S’s liking, or that of any other brand owner seeking to poach a rival’s name online. The court has decreed that buying your competitor’s name infringes trademark law on two counts: the ability to identify the origin of goods and services; and the right to preservation of a brand proprietor’s reputation. Crucially, it has ruled that proprietors of a trademark (let’s call them brand owners) can actually prevent a competitor using their name where they can prove free-riding or brand denigration is taking place. Which in practice will have a chilling effect on AdWord activity.
The ruling will cause widespread dismay, not least at Google – which has heavy investment in the practice. And all the more so because in a previous case, that of Google v Louis Vuitton (2010), the court had seemed to lean the other way. It said that Google, as intermediary, did nothing wrong in allowing AdWords to promote the practice of buying other people’s brand names, and that the existence of the service in no way infringed trademark law.
What it did not do was rule upon the legal responsibility of the search term purchaser, as opposed to the intermediary. In other words, the subsequent M&S case is a landmark judgement, which will now be handed back to the English courts for enforcement.
In the words of Kirsten Gilbert, partner at intellectual property specialist Marks & Clerk Solicitors: “Brand owners will be encouraged that their competitors no longer have a completely free rein over use of their trademark as a keyword. But, the practice of purchasing rivals’ trademarks as keywords is widespread, and marketers may now have to think of other creative ways to advertise their brands on the web.”
How two-edged the sword of justice is.