Working at a PR agency, I’m well aware that developing online campaigns for clients requires a certain amount of careful navigation. This was reiterated last week when I attended an event on Domains and Branding Online, hosted by Bootlaw. James Sweeting, IP Dispute Specialist at Pinsent Masons LLP delivered an accessible and interesting presentation on the often tricky subject of trade marking, online branding and Google AdWord bidding.
The topics raised proved to be equally relevant for both start-up companies, taking their first steps to trade mark a company name as well as more established brands battling it out online to protect their valuable branding. Given the speed that the internet has been developing over recent years, the law has inevitably had to play catch up, so it’s understandable that currently, looking after a new or established brand online can be confusing.
Firstly, it’s important to understand what a trade mark is, different trade mark classifications, what can be trade marked, what the benefits are and the issue of unregistered rights. These points really warrant more elaboration than I could possible provide within this blog, so it’s worth visiting the Intellectual Property Office website: www.ipo.gov.uk for more information on trade marking.
After discussing some basic elements of trade marking, James went on to explore the issue of bidding on brand names on Google AdWords, using an interesting example of the Interflora Vs Marks and Spencer’s case which is currently ongoing. Marks and Spencer has been bidding on the word, ‘Interflora’ to become part of the precious gold box at the top of Google search results for its flower delivery service. This raises a thought-provoking question about whether or not it’s right to use an already established name for your own promotion? Is it fair game? Or is it a damaging infringement on intellectual property rights?
Since this case was brought to light, the Court of Justice of the European Union has clarified the law: “…use of a competitor’s trade mark in the AdWords system can be unlawful where the use substantially interferes with a brand’s reputation and its ability to attract and retain consumers. As a result, brand bidding on competitors’ trade marks now carries more legal risk. The court also ruled that such use may also constitute free-riding (or taking unfair advantage) of a brand where that brand has established a reputation.” (View the full press release from Pinsent Masons)
Although the law hasn’t actually been implemented yet, the above statement is fairly clear-cut. The outcome of the Interflora Vs Marks & Spencer case will certainly be one to watch, however, the rapid pace at which the use of online tools is evolving clearly indicates that it won’t be the last legal challenge to affect big name brands online.
