Trademarks and the Internet

Transcription

1 Trademarks and the Internet Metatags and Keywords A Latin American Perspective Graciela Pérez de Inzaurraga

2 Latin American scenario Conflicts mainly focused on domain name disputes Growth rate for internet traffic expected to be considerably higher in Latin America than in Europe, US or Japan Conflicts related to unauthorized use of trademarks in the web expected to increase Emerging issues Use of another s trademarks as metatags or keywords Liability of auction sites

3 Annual growth rate in internet traffic Region Global Consumer web, data and Business North America Western Europe Asia Pacific Japan Latin America Central Europe Md. East/Africa 39% 37% 42% 37% 50% 49% 51% 21% 25% 28% 24% 45% 30% 50% 27% 32% 39% 26% 43% 29% 41% Source:Cisco Visual Networking Index: Forecast and Methodology,

4 Argentina Organización Veraz v. Open Discovery Searched term VERAZ Ad for GLOBINFO (sponsored link) Ad for VERAZ (natural results)

5 Argentina Organización Veraz v. Open Discovery Use of the keyword constitutes: Unauthorized use in commerce of the competitor s mark Use with the aim of attracting consumers seeking information for the trademark owner s services to the competitor s webpages Use which may cause confusion or mistake about the origin of the services or suggest association Unfair competition rules apply Trademark owner may prevent unauthorized use of its mark by a competitor under these circumnstances Federal Court of Appeals, Civil and Commercial Matters May 28, 2009

6 Different region, same questions METATAGS and KEYWORDS Trademark use? Definition of trademark Definition of use Infringing use? Extension of trademark rights Liability of service provider?

7 Trademark Distinguish a good/service from other in the same nature or category identification information-communication (e.g. AR-CL-MX-Cartagena Agrmt.) Distinguish a good/service of an undertaking from that of another source-origin-sponsorship (e.g. BR-UY) Protected functions of the mark Extension of trademark rights

8 Use Multiple roles in trademark law Acquisition/maintenance of rights Infringement Same standards? Use in commerce Broad sense: in the course of trade, with a view to gain Use as a mark Back to definition of mark and protected functions Consumer perception

9 Infringement Trademarks as property rights protection beyond risk of confusion beyond source-identifying function Use of another s mark to distinguish user s own goods/services Confusion/deception Bad faith Free riding Damage to reputation/distinctiveness Trademark in metatag or keyword conflicts does not distinguish user s goods/services

10 Exceptions to trademark exclusive rights: Retailer, distributor Indication of purpose or compatibility Literary or artistic work Information or comment Word in its usual meaning Indication of nature, quality, value, geographical origin Name Comparative advertising NOT TO Suggest sponsorship/affiliation Take unfair advantage Damage reputation distinctiveness

11 Trademarked metatags or keywords Generally admissible uses: retailer, distributor, licensee manufacturer or retailer of spare parts, accessories, compatibles provider of installation, maintenance or repair services information or comment Layout of the link, page or advertisement NOT TO suggest association, affiliation, sponsorship where it does not exist take unfair advantage (e.g., exxagerated display) damage reputation or distintiveness (alteration of visuals associated to the mark, use of mark as a generic, false assertions)

12 Trademarked metatags or keywords Use by a competitor trademark law + unfair competition rules Issues to consider: Sorting out fair and unfair practices Free riding: generally deemed as unfair Applying rules on comparative advertising Use of competitor s mark to draw attention to one s goods or services No comparison involved in typical uses of marks as metatags or keywords

13 Use of competitor s mark in metatags Local forecast: GENERALLY INFRINGING Average internet user assumes natural results are relevant to the query, notably those appearing on top positions Risk of confusion Risk of association (confusion as to sponsorship) Competitor s mark used to improve visibility in the web, diverting traffic to a site different than that of tm owner Free-riding: unfair Protection of advertising/informational functions of the mark

14 Use of competitor s mark in keyword advertising Sponsored links differ from natural results Average consumer would not typically assume association of ads with tm owner Unlikely risk of confusion or association, but not to be absolutely ruled out Advertiser takes advantage of the reputation or distinctive character of competitor s mark FAIR or NOT?

15 Use of competitor s mark in keyword advertising Local forecast: LIKELY INFRINGING Trademarks as property rights Confusion interpreted broadly Protection beyond risk of confusion Protection to advertising and informational functions of the mark: trademark owner should be able to control messages associated to the mark No free-riding in competition: taking advantage of a competitor s trademark reputation generally deemed unfair

16 Keyword advertising Responsibility of service providers SP get revenues from sale of another s marks as keywords Take advantage of the reputation or distinctive character of another s mark Not competitors of trademark owner Fair free riding Non-infringing uses of third party s marks in keyword advertising Local forecast: NOT LIABLE unless refuse cooperation to disable trademarked keywords in context of likely infringement upon receipt of complaint from the trademark owner

17 Summary Keys are vital tools to classify, index and route information in the web Search engines are vital to design tools and processes to improve access to information in the web Revenue obtained from sale of trademarked keys not sufficient grounds to determine infringement Various non-infringing uses of another s mark as metatag or keyword

18 Summary Not all uses of another s mark as metatag or keyword are infringing Use of competitor s mark as metatag: generally infringing on the grounds of risk of confusion or association and unfair free-riding Use of competitor s mark in keyword advertising: likely infringing on the grounds of unfair freeriding Search engines may be held liable under civil law if refuse cooperation to trademark owners in cases where infringement is likely to be established

19 Trademarks and the Internet Metatags and Keywords A Latin American Perspective Graciela Pérez de Inzaurraga