SEO WITH SOMEONE ELSE’S TRADEMARK
The possibility of reaching new customers quickly can be so tempting for some entrepreneurs that they opt for marketing strategies with questionable trademark and competition compliance. One such practice that is definitely worth paying attention to when discussing strategy with a marketing consultant is positioning on an Internet search engine (such as google) using keywords that refer to market competitors.
POSITIONING USING SOMEONE ELSE’S TRADEMARK
It often happens that after typing someone’s verbal trademark into a google search engine, links to websites of companies that do not offer goods or services under that trademark appear in the first search results. Such a situation occurred in one of the recent cases before the Court of Justice of the European Union (CJEU Judgment of 27.04.2023 C-104/22 Lännen MCE Oy vs Berky GmbH, Senwatec GmbH & Co. KG).
In this case, the German company used the word “WATERMASTER” to position its own website in a google search, while the word was a trademark of the Finnish company. Both companies offered goods of the same type. The German company purchased paid advertising for its website on the search engine consisting in the fact that when a user typed the word “WATERMASTER” into the search engine, a link to the German company’s website appeared in the first place, even before the organic search results.
The judgment in the “WATERMASTER” case did not settle the question of the legality of such an action from the merits, but concerned preliminary issues of a procedural nature, which I will return to later in this article, but in my opinion, such use of someone else’s trademark to position one’s own website, where the entrepreneur offers his own goods, can be considered both trademark infringement and parasitic use of someone else’s market position, i.e. an act of unfair competition. In any case, it will be possible to demand the prohibition of such a practice, to remove its effects, to demand compensation, or to publish a statement, for example, with an apology.
WATERMASTER TRADEMARK JUDGMENT
In the WATERMASTER case, the key question was in which country should, or could, a lawsuit for EU trademark infringement be filed? The possible options were a Finnish court and a German court, the former having jurisdiction over the seat of the trademark owner, the latter having jurisdiction over the seat of the infringing company.
As a rule, a lawsuit should be filed in the court of the country where the defendant is domiciled. However, it is also possible to file a lawsuit in another country if there is a link in that country between the defendant’s activities and the recipients of the defendant’s goods and services residing in that other country.
By this “link” we mean a situation in which the defendant directs its goods or services to recipients in that country. The standard link would be the ability of residents of the country to purchase goods or services, or the delivery of goods to their place of residence. However, in the WATERMASTER case, in theory, the German company did not foresee the possibility of delivering goods to customers in Finland and claimed that it had no operations in that country.
The CJEU, however, considered as a fact of targeting its goods and services to customers in Finland the circumstance of actively acquiring a positioning service for its goods and services using Google’s search engine with an extension specific to that country – i.e. google.fi.
What is the conclusion for the Finnish company from the above judgment? The Finnish company can sue the German company in a Finnish court, thus saving the costs of hiring a German law firm, translating documents, or possibly traveling to Germany. Litigating in one’s own jurisdiction is always some savings for the plaintiff.
A LAW LESSON FOR THE MARKETER
From the ruling in question, it is worthwhile for professionals involved in online advertising and marketing to remember that in the vast majority of cases, one should not use someone else’s trademark as a keyword to position one’s own website in a search engine. What’s more, you should also not use keywords that are not trademarks, but clearly refer to another well-known entity in the market.
Such actions will not only lead the client to costly litigation and damage his reputation in the environment in which he is operating, will lead to conflict between the marketer and his client, but may also destroy the reputation of the professional marketer who recommended or made such advertising.
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