From 1 January 2021 all EU trade mark registrations will no longer cover the UK.
However, all EU trade marks that have been registered before 31 December 2020 or ‘IP Completion Day’, will be automatically converted by the UK Intellectual Property Office into their own fully independent UK trade mark holding the original EU trade mark filing date. There will be no additional fees to pay.
We are all familiar with carrying out a Google search and seeing adverts for similar products to those we have searched. Search engines such as Google allow advertisers to place adverts that will appear on relevant search results and also on their partner websites.
What is an advertising keyword and what is a metatag?
An advertising keyword allows an advertiser to have their adverts placed on a search engine’s results. An advertiser can purchase keywords relevant to their business so that when a user carries out a search, their advert is placed either above or to the side of the natural search results.
Metatags consist of keywords or other text which are embedded in the language of a website. A metatag’s function is to describe the content of a website, usually in the form that someone would search and would be picked up by a search engine. For example, a travel guide website may use the metatag term “travel inspiration”.
Can you use trade marks as an advertising keyword?
The Courts have considered whether the use of a trade mark as a keyword in an advert would constitute a trade mark infringement.
The key factor is whether the average internet user would ascertain that the goods/services offered by the advertiser are connected with the trade mark owner. If it is clear that there is no commercial connection between the advertiser and the trade mark owner, then it is not infringement. If it is confusing or unclear to an average internet user whether there is a connection then there would be a likelihood of infringement.
This means that a trade mark owner can prevent others from using its trade mark as a keyword in relation to the goods/services with those for which the trade mark is registered, provided that the advertisement that is displayed fails to make it clear that the goods/services come from someone other than them.
Can you use trade marks in metatags?
In relation to metatags used on websites, if a web search against a trade mark produces both the trade mark owner’s website and a third party’s, provided that there is no likelihood of confusion on the part of the public then there would be no infringement.
Some practical considerations for trade mark owners
Trade mark owners should carry out frequent online searches on different search engines with different keywords, phrases and combinations to identify possible infringements. If trade mark owners are unsure whether use is an infringement then they should seriously consider taking legal advice to avoid a potential claim against them for unjustified threats.
If you need advice on this or any other Brand Protection matter, please contact the Brand Protection team.