A blog relating to Internet legal issues by Professor John Swinson, University of Queensland
Metatags and Google advertisements found to be trademark infringements
The case is Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56.
The case concerned a real estate agent advertising short term accommodation, using the name of a nearby Accor hotel (which was a registered trademark) to attract Internet users to the real estate agent's booking website.
The court confirmed findings of the trial judge that the following were trademark uses and trademark infringements: use of of the trademark in the domain name, use in metatags for the website, use in headings for the website, use in email addresses, and use in Google advertisements.
New Zealand AdWords Case
InterCity Group (NZ) Ltd v Nakedbus NZ Ltd [2013] NZHC 379
See also comment.
Use of a competitor's mark in advertising could amount to an infringement of their trade mark unless it is clearly for descriptive or comparative purposes only e.g. if the advertisement includes sufficient text to differentiate the product or service that of the competitor.
Trademarks and website headings
See: Lift Shop v. Easy Living Home Elevators [2014] FCAFC 75
See also comment.
realestate.com.au Federal Court decision
The decision is [2013] FCA 539.
The case concerned a generic term, that was used as a domain name, but where significant advertising had built up recognition of the brand. The Applicant lost on consumer protection grounds but was successful in relation to trade mark infringement. The case shows the risks of using a dictionary term as a brand, and the importance of a trade mark registration.
"245 However that observation about the ordinary case does not really address (as neither Perram J nor Chesterman J were called upon to address) a situation where the highly descriptive nature of the second-level domain (“realestate”) makes a suffix such as “.com.au” essential to brand or name recognition. Consumers with some familiarity with realestate.com.au as a brand are likely to look beyond “realestate” and to the entire domain name in order to establish identity. A real danger of confusion again arises because in the scanning process which may occur on a search results page, some consumers will miss the indistinctive “1”. I have therefore concluded that the use of “realestate1.com.au” as part of an internet address on a search results page, constituted the use by Real Estate 1 of a mark that was deceptively similar to REA’s realestate.com.au trade marks."
Telephone Numbers, Domain Names and Trade Marks
1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209
This case involves a dispute between 1300Flowers and 1800Flowers.
It reminds me of the domain name decisions concerning "Phonewords". See for example:
the 1300fitness.com.au decision.
Domain Name - Use as a Trademark?
While it has been held that a domain name can in some circumstances constitute use of a trade mark (see Sports Warehouse v Fry at [146]-[156]), there was no evidence before the court to establish that, as at December 2006, the TENNIS WAREHOUSE mark had acquired a reputation through use of the domain names amongst any consumers or any significant section of the public."
See Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 (13 February 2012)
Metatag Use is Not Use as a Trade Mark
Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 (18 November 2011)
Inteflora case - bidding on trademarks as Google keywords
Keywords in Europe
Extract from legal newsletter, IBLS:
The latest advocate general opinion on keywords advertising could, if followed by the European court, have a significant impact on Google’s advertising model. The advocate general’s opinion in Interflora v M&S advises that a trademark owner can take action against an advertiser who attempts to benefit from the attractive force of the proprietor’s mark. This is the first time that such a high court has opined on a dispute between a trademark owner and advertiser, rather than examining Google’s role – but it could deter advertisers from bidding on others’ trademarks.
The advocate general states that trademark use as a keyword can be forbidden under Article 5(2) of the European Trademarks Directive if “the advertiser attempts thereby to benefit from its power of attraction, its reputation or its prestige, and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark”.
Yesterday evening a crowd gathered at University College London for a seminar on the future of advertising function of the trademark. Although the speakers were in the dark about the advocate general’s opinion in Interflora, they nevertheless provided insight that takes on a new light today. For instance, this latest opinion continues the court’s flirtation with the advertising function, which could disappoint Annette Kur, one of last night’s speakers and co-author of the recent study into the European trademark system. “Including the advertising function into reasoning under Article 5(2) TMD is unnecessary and dangerous,” she said, advising brand owners to forget about trying to use the advertising function to gain protection beyond the established function of the trademark. “Stick to what you know,” she said.
Trademark owners will have to wait some time for the court’s judgment in Interflora.
See also FT
Keyword Decision in California
Given the nature of the alleged infringement here, the most relevant factors to the analysis of the likelihood of con- fusion are: (1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.
The district court did not weigh the Sleekcraft factors flexibly to match the specific facts of this case. It relied on the Internet “troika,” which is highly illuminating in the context of domain names, but which fails to discern whether there is a likelihood of confusion in a keywords case. Because the linchpin of trademark infringement is consumer confusion, the district court abused its discretion in issuing the injunction. "
Keywords abuse - damages of $292,000
Tiffany v. eBay
EBay Inc did not engage in trademark infringement and dilution by selling counterfeit Tiffany & Co goods on its website, a U.S. appeals court ruled on Thursday, but it ordered further review of the jeweler's claim of false advertising.
Tiffany and other luxury brands have long argued that counterfeit merchandise bearing their names is sold on eBay. The Web commerce company, which does not itself put the goods up for sale, says it has spent millions of dollars to track down counterfeiters and remove such listings.
Google Counter-sues regarding AdWords
Google and Trademarks
In a long-awaited opinion, the 2nd U.S. Circuit Court of Appeals ruled that Google must face a trademark infringement lawsuit for selling keywords that trigger ads.
The three-judge panel reversed a lower court's dismissal of Rescuecom v. Google, 06-4881, in which computer-repair company Rescuecom had claimed that users could be confused by links to competitors' ads that appear alongside Google search results for the company's trademarked name.
See
Rescuecom Corp. v. Google Inc., 2009 WL 875447 (2d Cir. April 3, 2009)
New Californian Privacy Law: CPRA to effectively replace CCPA
On U.S. Election Day, 3 November 2020, voters in the State of California overwhelmingly voted in favour of Proposition 24—a ballot measure t...

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The United Nations intellectual property agency (WIPO) is the latest front in the US-China trade war. http://www.theage.com.au/world/sad-am...
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Carly Long, an expert in domain name litigation, will teach the first half of the class this Tuesday evening. You may wish to have a look a...
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This website has some useful links and references: http://www.epiphanysolutions.co.uk/article-index/rights-and-laws-of-the-internet/
