In July 2010, we compared Google to the Wild West in our post “The Wild West and Google Places (Local Business Listings) – Google’s Sheriffs Are on Patrol“. In our article, we underlined Google Places as the “wild west” of online marketing because at that time there did not appear to be any concrete rules in place to protect any entity’s legal rights on Google or the web for that matter.

Nowadays, Google has matured and evolved somewhat from a legal perspective but now must deal with the influx of new laws and regulations surrounding the growing area of Internet Law. Boundaries and rules must be clarified and implemented so the World Wide Web can be a secure and peaceful place for all the individuals and companies who interact there.

Specially, the Digital Marketing and Search Engine Optimization (SEO) industries must deal with their own legal problems. The ever-increasing importance of Trademarks in the market, which represent the goodwill and brand value of a company, have made companies more careful and sensitive to trademark infringement and enforcement on the Internet. However, as we will see, Internet Law is still in its infancy and emerging at the same pace as the Internet, and sometimes even slower. Search engine optimization (SEO) strategies are a good example of how trademarks can be infringed upon very easily and by many. SEO companies many times use trademarks in their keyword or title meta-tags in order to attract potential web visitors to their website. This constitutes, in general terms, the “initial interest confusion” theory. In the US, recent law sustains that there would be trademark infringement even when the confusion is created with the prospective customer temporarily and will be clarified before any purchase is made online or otherwise. For example, if you use a competitor’s trademark as a meta-tag, Google (or other major search engines) may show websites, yours and your competitor’s with the trademarked brand. The advantage will be in attracting the “initial interest” of the web visitor. Obviously once the customer clicks on your website, it will be made clear that you are not the trademarked product of you competitor and eliminate confusion.

But, can we say firmly that the above example constitutes trademark infringement? And therefore, can we not legally use a third party’s trademark or brand name in our search engine optimization (SEO) strategy? The answer is not so simple. In fact, currently there is no definitive answer and would depend on judicial discretion. Most Canadian Courts have ruled against this theory, on the grounds that users retain the ability to choose from the search results (in so far as your website does not contain confusing material) and secondly, on the basis that since keywords and meta-tags are not visible to users they do not get confused.

On the other hand, some Courts have decided in favour of the “initial interest confusion” theory arguing that this practice undermines the competitor’s trademark and provides for an easy and unfair advantage over the competitor who has made an effort to build his brand.

Canadian lawyer Lindsey Robinson states in her report “Is It Legal to Use Competitors’ Trademarks as Part of SEO Strategies? Canadian Court Finds Use of a Competitor’s Trademark as a Keyword Is Not Actionable”:

To quote from the Supreme Court: [s]uch diversion diminishes the value of the goodwill associated with the trade-mark and business the consumer initially thought he or she was encountering in seeing the trade-mark.  Leading consumers astray in this way is one of the evils that trade-mark law seeks to remedy.  

We trust the courts will have many more opportunities to review this issue, and analyze more carefully the matters outlined above; the initial interest confusion issue and the depreciation of goodwill issue, in particular, in service marks for which a trademark is “used” in association with the advertising of services.

On the other hand, if we take a look at the global trends in Internet Law, we can observe that in Europe most of the cases are settled in favour of the plaintiff. The courts have determined that using others trademark for SEO or other web related purposes not only undermines and dilutes the trademark, but also damages most of the trademark’s purpose i.e. distinguishing goods or services, indication of business prestige and goodwill along with damage to the advertising effort being made to the trademark.

Finally, it is important to note that undertaking a court proceeding of this scope requires time and money, hence your competitor will likely only take action if you are severely infringing on his rights. Our recommendation is to think carefully before using a registered trademark of a competitor in your SEO or digital marketing plan; it may not be actionable today in Canada but is it worth the risk?

Below are some general tips from iRISEmedia’s legal division which we feel should be considered when thinking of using a competitor trademark in your search engine optimization (SEO) strategy:

– Use the competitor trademark only when it is required to identify a product or service i.e. in terms of reasonable necessity of identification. For example if you were marketing a new tissue paper you may want to use the trademark “Kleenex” in your meta tags.
– Do not use it to draw traffic away from a competitor or confuse the customer.
– Do not suggest sponsorship or endorsement by the trademark holder.
– Ask permission from the holder. (We realize this is farfetched but it’s still the safest route).

*The information provided in this article is for general purposes and guidance only and is not intended to constitute legal or professional advice.

About iRISEmedia:

iRISEmedia.com is a Toronto digital media agency and SEO company, specializing in Social Media and internet marketing. We also manage online brand reputation with our in-house Internet Law Department. Our team helps clients increase their reach and profitability by developing and implementing customized and targeted online and social media marketing strategies. We service clients in Toronto, Ontario, the GTA and throughout Canada as well as globally.

Sources:

http://www.shiftlaw.ca/index.php/ip-law-toronto-blog/entry/a-brief-history-of-passing-off-websites-and-initial-interest-confusion-in-canada

http://www.bereskinparr.com/Doc/id629

http://searchenginewatch.com/sew/how-to/2064919/meta-tag-lawsuits

http://smallbusiness.findlaw.com/business-operations/issues-with-using-trademarks-as-meta-tag-keywords.html