Keywords, Google and What's Fair

Once bureaucrats gain a foothold, they are driven to expand their power: one restriction leads to two, then four, it’s exponential. And we all understand that governments worldwide were slow to react to the Internet, allowing years without any supervision, taxes, etc. How easy would it have been for the Royal Mail to charge, say, one pence per email? Had they done that in 1996 the current budget crisis might have been solved. The long and short of it is that governments would like to catch up and gain a strong foothold in Net commerce.

At any rate, the recent challenge to Google and the use of a trade mark as a keyword might be the exception: that is, a wise use of government regulation. The Court of Justice of the European Union (CJEU) ruled that purchasing another party’s trade mark as a keyword could infringe the trade mark proprietor’s rights (in the case between Marks & Spencer and Interflora).

The Court ruled that infringement occurs if the keyword’s use affects the original trade mark in two of its key functions: its ability to identify the origin of goods or services and its ability to preserve the proprietor’s reputation, which attracts customers.

So, for example, ‘Bob’s Marketing’ can’t use ‘Vertical Marketing’ in its ad words campaign as a way to come out on top when someone searches for Vertical.

In legal terms, proprietors of a trade mark with a reputation can prevent a competitor from such advertising where the competitor’s use of the keyword is free riding on the trade mark’s reputation.

As reported on, Kirsten Gilbert, partner at Marks & Clerk Solicitors, said, “Brand owners will be encouraged that their competitors no longer have a completely free rein over use of their trade mark as a keyword. But, the practice of purchasing rivals’ trade marks as keywords is widespread, and marketers may now have to think of other creative ways to advertise their brands on the web.

The key phrase there, no pun intended, is ‘creative ways’. Marketing is about creativity and not riding the coat tails of someone else’s smart marketing idea. There is something inherently immoral and unfair about that, and it’s surprising that Google did nothing to prohibit this practice. Well, not surprising, given the amount of revenue keyword advertising generates.