The Use of Trade Marks in Keyword Advertising. Developments in ECJ and National Jurisprudence

Lee, Nari/et al. (ed.): Intellectual Property, Unfair Competition and Publicity – Convergences and Development (EIPIN Series). Cheltenham, UK/Northampton, MA, Edward Elgar, 2014, pp. 231-286

Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 12-06

51 Pages Posted: 16 May 2012 Last revised: 10 Mar 2015

Nicole van der Laan

European Patent Institute (EPI)

Date Written: April 5, 2012

Abstract

The use of trade marks in keyword advertising has been one of the ‘hottest’ issues in intellectual property law for several years. This entirely new way of using trade marks as a targeting tool has provoked a discussion concerning the core concepts of trade mark law. This chapter discusses the issues of ‘trade mark use’ (section 5), the likelihood of confusion test (section 6), the protected functions of a trade mark (section 7), the protection of reputable marks (section 8), and the limitations to trade mark rights (section 9) in the context of keyword advertising. First, this paper will illuminate the functioning of keyword advertising and the various interests at stake (section 2). Thereafter, the structure of Art 5 TMD, as well as the underlying rationales and policy concerns of trade mark law will be addressed (sections 3 and 4). In addition to trade mark law, unfair competition law issues will briefly be pointed out (section 10). Furthermore, a number of national court decisions applying the guidance provided by the ECJ will be analyzed (section 11). The chapter concludes by arguing an approach towards the use of trade marks in keyword advertising which takes into account the freedoms of information and competition and which focuses on the prevention of consumer confusion (section 12).

Keywords: advertising, AdWords, trade mark law, trade mark directive, trade mark use, likelihood of confusion, initial interest confusion, trade mark functions, origin function, advertising function, investment function, freedom of information, competition, free-riding, dilution, limitations

Suggested Citation

van der Laan, Nicole, The Use of Trade Marks in Keyword Advertising. Developments in ECJ and National Jurisprudence (April 5, 2012). Lee, Nari/et al. (ed.): Intellectual Property, Unfair Competition and Publicity – Convergences and Development (EIPIN Series). Cheltenham, UK/Northampton, MA, Edward Elgar, 2014, pp. 231-286; Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 12-06. Available at SSRN: https://ssrn.com/abstract=2041936

Nicole Van der Laan (Contact Author)

European Patent Institute (EPI) ( email )

Bayerstrasse 83
Munich, 80335
Germany

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