In this blogpost, Vernita Jain, Student, National Law Institute University, Bhopal, writes about whether using keywords is trademark infringement or not and the initial interest confusion doctrine.
The era of internet has lead to the coming up of keyword advertising. Generally defined as a “form of advertising on the Internet in which a business pays to have an advertisement [for] a website appear on [a consumer’s] computer screen when [the consumer] uses a particular word or phrase to search for information on the internet,” they [lay a very important role in advertising and marketing of various businesses.
But the problem arises when a person or a company purchases a keyword in order to advertise his product and such a word is a trademark of a third party. In such a case, a consumer is likely to get confused with such keyword, as in if a person is searching a word which is a trademark of a particular third party and is lead towards the advertisement of the keyword purchaser, is that considered to be a trademark infringement?
The problem that is posed by the trademark owner is that this practice of buying keywords results in confusion among the consumers. As a consequence, many of the trademark owners have filed hundreds of cases on their competitors buying such keywords. They claim that the Lanham Act of USA prohibits any use in commerce of a registered mark or imitation thereof that “is likely to cause confusion, or to cause mistake, or to deceive.”[1] Therefore, such a practice is the practice of trademark infringement.
Initial interest confusion
The doctrine of initial interest confusion says that the confusion occurs prior to purchase. A consumer might be confused at the starting point of his search as a result of the misuse of the trademark by the keyword purchaser.
Thus, the factor that plays a most important role in determining that whether there is an infringement or not is the concept of ‘Initial Interest Confusion.’
In the case of Brookfield Communications v. West Coast Entertainment[2],
The court while giving importance to the protection of the trademark owner noted that “the use of another’s trademark in a manner calculated ‘to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may be still an infringement.’’
Factors that courts typically consider in determining whether there is a likelihood of confusion include:
- The amount of similarity between the goods and services and trademark;
- The strength of the plaintiff’s mark;
- Evidence of confusion caused to consumers;
- The intention of the defendant in using its mark;
- The amount of reasonable care that is exercised by the consumer.[3]
The courts have been uncertain on this concept. In many cases, the court has held that such a practice of keyword advertising is normal competition if it does not result in customer confusion.
However, in many cases, the courts of USA, have ruled that if a person or a party uses a trademark of another in the form of a keyword, such act is not considered as a trademark infringement. In order to make a person liable under the Lanham Act for purchasing that keyword and infringing the trademark, the trademark owner has to establish that
- Is the trademark being “used” in commerce?
In order to make a person liable for the trademark infringement under the Lanham Act, it is necessary to prove that the person accused of the infringement must be using such mark or the keyword. However, it is well settled by a number of cases that the use of a ‘keyword’ as a trademark does qualify as a “use in commerce” under the Lanham Act.
- What is the consumer searching for?
It has been decided by various courts that if a person types the name of a particular brand or product, then it is to be inferred that he is searching for that particular product or that particular brand. Therefore, in these cases, it has to be assumed that the customer was searching that particular product of particular brand only.
- Is the trademark used in the text or body of the advertisement?
It has been decided in the case of Rosetta Stone Ltd. v. Google, Inc,
that the when the trademarks as ‘keywords’ were used in the title or body of an ad or “sponsored link” that appears on a Google search results page there is a likelihood that such would cause consumer confusion.
Keeping the above three factors in mind, it is important that such an attention should be paid to the visual advertisement of the keyword purchaser on the search engine result’s page, because while browsing the product information the consumer might be confused by the advertisement on the same screen.
Therefore, if a person uses the trademark as a keyword in the body of the advertisement and tries to confuse the customers, it can result in trademark infringement.
The application of the law on keyword advertising
This doctrine of ‘Initial Interest Confusion’ has not been embraced by all the courts. In the cases of keyword advertising, there are less number of cases where the courts have dealt with the issue of confusion- let alone initial interest confusion.
Due to the lack of cases on this point of law, many of the courts have decided cases those should have involved initial interest confusion on any other issue that has resulted in some unsettled question regarding this doctrine. Some courts have adopted the aspect of Initial Interest confusion, but some have not considered the online aspect at all.
Conclusion
Keyword advertising has proved to be a potentially valuable method of online advertising as it has the ability to catch the interested and potential purchasers. However, the law that is applicable to this aspect is not settled and if someone purchases a keyword that is a trademark of a third party it has the risk of infringement.
But it is possible to use a trademark as a keyword without any liability of infringement if the keyword purchaser (a) has given truthful advertisements, (b) undertook preventive steps to avoid confusion between trademark and keyword (c) have avoided a false association between the goods or services advertised and the mark owner.
[1] S. 32 of the Lanham Act.
[2] Brookfield Communications v. West Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999).
[3]http://www.lgtrademark.com/wpcontent/themes/nextclient/media/Whether_Trademarks_Used_in_Keyword_Searches_Constitutes_Infringement.pdf.
