Internet trade mark infringement and passing off in the UK
What is internet trade mark infringement?
In a nutshell, internet trade mark infringement involves misuse of someone else’s registered trade mark in an online context.
Internet trade mark infringement can arise in many ways. For example, there may be misuse of a competitor name in a domain name (see domain name disputes), in website branding, or perhaps even in website source code such as title or meta-description, in order to improve search engine rankings.
What is passing off?
By contrast, names and brands which are unregistered but have acquired reputation and goodwill can be protected online through the law of passing off.
What about infringements involving Google Ads?
As internet lawyers, we commonly encounter online trade mark infringement or passing off involving use of competitor names in Google Ads. We often help trade mark owners make complaints direct to Google requesting that offending ads be removed from Adwords.
Because of the way that the law has evolved, in the UK it is now difficult to stop competitors selecting trade marks as keywords – if the trade mark itself does not actually appear in the advertisements. In fact, Google will not entertain complaints which are based purely on use of the trade mark as a keyword.
Generally, the key issue is whether use of the name within the ad is likely to cause confusion to users as to the origin of the relevant goods or services.