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Lisbon, Danielle --- "The 'Use As A Trade Mark' Requirement In Keyword Search Advertising" [2018] WAStuLawRw 3; (2018) 2 Western Australian Student Law Review 33


THE ‘USE AS A TRADE MARK’ REQUIREMENT IN KEYWORD SEARCH ADVERTISING

Danielle Lisbon[*]

Trade Marks—The ‘Use As A Trade Mark’ Requirement—Keyword Search Advertising—Invisible Keywords—Google AdWords

Trade mark infringement requires that the infringer uses a registered trade mark ‘as a trade mark’. This requirement gives rise to problems when a third party uses a registered trade mark in the context of keyword search advertising. Whether the use of a trade mark as a keyword constitutes ‘use of a trade mark’ is contentious. This article argues that the ‘use as a trade mark’ requirement should be interpreted narrowly to exclude invisible keyword search advertising on the internet. As it stands, trade mark law is sufficiently able to cope with modern technological advertising techniques.

I INTRODUCTION

Under s 120 of the Trade Marks Act 1995 (Cth) (‘the Act’), infringement of a registered trade mark will only occur if the defendant uses the trade mark ‘as a trade mark’.[1] A trade mark is a sign used, or intended to be used, to distinguish a person’s goods or services dealt with or provided in the course of trade from the goods or services of another person.[2] The ‘use as a trade mark’ requirement limits the scope of the exclusive rights of the registered trade mark owner to the intended protection of a trade mark, which is the trade mark’s association with the origin of the goods or services.[3] The requirement involves an objective assessment: viewing the alleged infringement of the trade mark from the perspective of the consumer.[4] This assessment is the most beneficial way to balance competing stakeholder interests in trade mark law, including the interests of the registered trade mark owner and other traders who wish to legitimately use a registered trade mark in a way that is not misleading to consumers.[5] As it is the consumer who relies on trade marks to make decisions regarding goods and services, it is logical to assess alleged infringement from the perspective of the consumer.[6] The ‘use as a trade mark’ requirement provides the intended and necessary level of protection for registered trade marks.[7]

This article considers the application of trade mark law to circumstances involving the use of keyword search advertising. It argues that the ‘use as a trade mark’ requirement should be interpreted narrowly to exclude the use of trade marks in non-visible keyword search internet advertising. Any other approach would constitute an improper and excessively broad interpretation of s 120 of the Act, which would be inconsistent with the definition of a trade mark.[8] In Part II, the article explains the ‘use as a trade mark’ requirement and analyses its benefits, including limiting the exclusive rights of the trade mark owner, the requirement’s technology neutral application and its consumer focus. Part III considers the benefits of the ‘use as a trade mark requirement’. Part IV critically analyses the application of the ‘use as a trade mark’ requirement to visible and non-visible keyword advertising.

II THE ‘USE AS A TRADE MARK’ REQUIREMENT

Section 17 of the Act defines a trade mark as a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.[9] Therefore, in order to be used ‘as a trade mark’ for the purposes of infringement under s 120, the trade mark must be used as a badge of origin to indicate a connection in the course of trade between goods and the person or consumer who will be applying the trade mark to the goods.[10] Analysis of this requirement involves an objective assessment of the purpose and nature of the impugned use of the trade mark,[11] and does not rely on the subjective intention of the alleged infringer.[12] Context is significant and the totality of the appearance of the registered trade mark will be central to the analysis of whether the trade mark was used ‘as a trade mark’.[13]

The following subsections identify the benefits of the ‘use as a trade mark’ requirement.

A Limiting the exclusive rights of trade mark owners

The ‘use as a trade mark’ requirement ensures that the trade mark owner’s exclusive rights to use and authorise the use of their registered trade marks do not extend beyond these rights. For example, in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd,[14] it was found that Sterling Pharmaceutical’s registered trade mark, ‘caplets’, was used by Johnson & Johnson to describe a capsule shaped tablet and not to distinguish that product in the course of trade. That case demonstrates that there are many circumstances in which the use of trade marks owned by a competitor are ‘quite legitimate’.[15]

The Act provides further examples of when a trade mark can be used legitimately, including the use in good faith of a registered trade mark that is also a person’s own name, a description of the character or quality of one’s goods, comparative advertising, or prior continuous use.[16] As a consequence, other persons are able to use registered trade marks in a way that is not misleading to consumers.

If the ‘use as a trade mark’ requirement and the legitimate use exceptions did not exist, there would be a finite amount of words available for use in advertisements. This would result in traders spending an unreasonable amount of time searching for unregistered signs to advertise their products and services and could discourage innovation in trade mark registration, particularly in specialised industries where certain words are indispensable in describing services or goods of that class. The ‘use as a trade mark’ requirement prevents the registered trade mark owner’s scope of rights extending beyond what is necessary to protect the trade mark’s association with the origin of the goods or services in the objective view of a potential consumer.[17]

B Technology neutral

The use of a trade mark to indicate a connection in the course of trade has been referred to as the ‘branding function’ of the trade mark.[18] There are numerous ways in which a person can use a trade mark to build a brand, including featuring the trade mark on social media, websites, flyers and on the labels of goods. Writing extrajudicially, Justice Kozinski recognised the branding utility of trade marks which are ‘injected into the stream of communication with the pressure of a firehose by means of mass media campaigns’.[19] Trade marks are and will continue to be updated for use across different technology mediums as digital and mobile technology drive innovation in the way brands interact with consumers.[20] The ‘use as a trade mark’ requirement is technology neutral, meaning it is unlikely to require updating to incorporate advanced advertising techniques. This is because the relevant test involves viewing the trade mark use from the perspective of the consumer. In other words, where the trade mark is visible to the consumer, the objective test will apply regardless of the technology used.

This can be seen through early judicial application of the ‘use as a trade mark’ requirement to non-traditional contexts such as internet domain names, and in more recent cases relating to search engine optimisation, a little-known concept at the time the Act was implemented.[21] In Solahut Industries Pty Ltd v Solar Shop Pty Ltd,[22] a domain name was considered analogous to a shop front for the purposes of applying the ‘use as a trade mark’ requirement from the perspective of the consumer.[23] The ‘use as a trade mark’ requirement correctly focuses on whether the mark is being used to distinguish goods in the objective view of the consumer and can be universally applied to all advertising mediums.[24]

C Consumer focused

Section 120 of the Act states that a person is not taken to have infringed the trade mark if the person establishes that the way in which the registered trade mark was used is not likely to deceive or cause confusion. In Veda Advantage Limited v Malouf Group Enterprises Pty Limited[25] (‘Veda’), it was held that the advertiser was merely selecting keywords to provide to Google for the purpose of gaining internet traffic. The keywords were not visible to the consumer and were therefore not ‘used as a trade mark’ to indicate a connection in the course of trade between the services provided by the alleged infringer and the services provided by any other trader.[26] This is a sensible interpretation because it supports the orthodox application of the ‘use as a trade mark’ limitation.[27] The objective requirement of the view of the consumer provides the most accurate representation of how the trade mark will be interpreted and how the interests of the trade mark owner may be affected.[28]

In turn, this assessment protects the interests of the consumer by ensuring that the consumer has the ability to make a clear and informed choice before purchasing goods and services.[29] If the assessment focused on the rights of the trade mark owner, there would be a risk of over-protecting the trade mark, thus creating an imbalance of interests, where third parties are prevented from using registered trade marks in a way that might otherwise be deemed legitimate under the Act.[30]

III APPLICATION OF THE ‘USE AS A TRADE MARK’ REQUIREMENT TO KEYWORD SEARCH ADVERTISING

Issues arise in the context of applying the ‘use as a trade mark’ requirement to keyword search advertising, where the keywords used are registered trade marks, or deceptively similar or substantially identical to the registered trade mark of a competitor. Keywords are generally invisible to the consumer, and so the question arises: can invisible use of a trade mark satisfy the ‘use as a trade mark’ requirement?

A Background

The internet is arguably the most significant platform to direct consumers to goods and services, with approximately 6.5 billion searches conducted daily through internet search engines worldwide.[31] Search engines capitalise on this by allowing individuals and businesses to purchase keywords which, when a potential consumer searches the purchased keyword, place their websites and corresponding goods and services in a visually favourable position. Keywords can be used visibly in website or search result headings in the form of sponsored links.[32] Alternatively, keywords can be used invisibly as metatags or Adwords, as used by GoogleAds, to present a specified link at the head of the search results.[33] GoogleAds operates through an auction process that considers both the bid made by competitors and their quality score.[34] The quality score is determined by how relevant and useful the advertisement is to the search terms used by the person conducting the search, how many clicks the advertisement has received previously and the relevancy of the landing page.[35]

B Visible keywords

Visible keywords that are a registered trade mark, or deceptively similar to, or substantially identical to the registered trade mark, may constitute an infringement if the context in which the words appear is misleading to the consumer. In Veda, it was found that the respondent Malouf used the heading ‘The Veda Report Centre’ as ‘a badge of origin to indicate a connection between the Malouf business and Veda, to market the Malouf business under the Veda name’.[36] This was different to other sponsored link headings which were merely descriptive of the nature of the work that Malouf conducted, which included fixing credit files of consumers that were originally conducted by Veda.[37] Such headings included ‘fix my veda file’ and ‘clean my veda history’.[38] This was the correct application of the ‘use as a trade mark’ requirement as the decision focused on the interpretation of the consumer and the likelihood that the consumer would presume affiliation between Malouf and Veda.

C Invisible keywords

The ‘use as a trade mark’ requirement successfully limits the scope of the exclusive rights of the registered trade mark owner because it relies on the objective assessment from the viewpoint of the consumer. It is on this basis that the competing interests involved in the trade mark are recognised and balanced. It is therefore inappropriate to consider scenarios where keywords are invisible to the potential consumer as a ‘use as a trade mark’.[39] To do so would be contrary to the settled interpretation of s 120 of the Act, and would have the effect of disregarding the objective test that is so well founded and followed under Australian law.[40]

In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[41] the Full Federal Court found that use of another party’s registered trade mark in the source code of a website amounted to infringement of the registered trademark.[42] Although source code is typically invisible to the average internet user, a consumer who knew how to access source data could view and create a printout displaying keywords, inclusive of any registered trade marks, which had been used in the source code. The trade mark was therefore potentially visible to the consumer and the keywords were found to be used ‘as a trademark.’[43]

Distinguishing this case, in Veda, Katzmann J found that the advertiser merely selected the keywords to provide to Google, and this did not indicate a connection in the course of trade between the services provided by the alleged infringer and other service providers. Her Honour based her decision on the fact that the keywords were invisible to all consumers.[44] Katzmann J questioned how invisible keywords could denote a connection to the consumer in the course of trade between the services provided by the alleged infringer and the services of another trader.[45] Her Honour’s decision appropriately restricts the ‘use as a trade mark’ requirement to uses that have the potential to mislead the person applying the trade mark to the goods and services.

1 Market competition

Interpreting the ‘use as a trade mark’ requirement to include invisible keywords would unjustly favour the interests of the trade mark owner and disregard the alternative interests that the requirement so carefully balances. Affording too much protection to a trade mark could allow registered trade mark owners to suppress essential information, such as new products or services with improved features to their own, and erect barriers to competition.[46] This would prevent other traders from entering the marketplace, describing their products and making product comparisons. In turn, consumer choice would become dominated by certain brands.

In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd,[47] the Full Court held that Easy Living Home Elevators had not infringed the trademark of Lift Shop by using the registered trade mark ‘Lift Shop’ as a purchased keyword for internet advertising because the term was not used as a trade mark. [48] Rather, Easy Living had used the mark to convey that its business supplied lifts and elevators. If the ‘use as a trade mark’ requirement had been interpreted broadly, Lift Shop might have prohibited Easy Living from using generic terms necessary to advertise their products and therefore prevented Easy Living from competing efficiently in the home elevator marketplace. This result would have been detrimental to consumers, as competition in the marketplace has the effect of improving the quality of goods and services by encouraging innovation, and in turn, expanding consumer choice.[49]Granting exclusive intellectual property rights over a trade mark prevents free public use.[50] This puts the property owner in a position of power which can lead to an increase in prices and lower output of goods and services.[51] The ‘use as a trade mark’ requirement limits these exclusive rights, allowing competitors to compete in the market effectively and therefore increases consumer benefit.[52]

2 Consumer choice

It is arguable that although trade marks in keyword advertising are being used in a way that is invisible to the consumer, the consumer is being misled in the sense that they are viewing internet results they may not have otherwise seen had the registered trade mark keyword not been purchased. For instance, in Veda, it is possible that the Malouf website would not have formed part of the search results displayed to the consumer when the consumer searched for Veda if Malouf had not purchased various keywords relating to Veda. However, the reality is that the consumer is simply being presented with a list of alternatives and they have a choice as to which result they choose to view.

In Reed Executive Plc v Reed Business Information Ltd,[53] it was found that internet users are fully aware of advertisements that appear in the course of producing search results and that a search can produce vague results.[54] Therefore, the consumer may not presume that there is a link between the registered trade mark and a keyword unless the actual content of the advertisement suggested otherwise. Additionally, in circumstances where multiple words are included in the internet search terms, it would be impossible for the consumer to tell which word prompted the invisible keyword and therefore impossible to make a judgment regarding the origin of the goods or services.[55] Section 120 of the Act prevents consumer confusion from misleading associations between the goods and services and the badge of origin, and does not have the purpose of guiding consumer choice.[56]

3 Is it fair to benefit from the use of a third party trade mark?

Some may argue that the person purchasing keywords, in the context of keyword advertising, is unfairly benefitting from the established reputation associated with the registered trade mark by gaining internet traffic and that the ‘use as a trade mark’ requirement should be interpreted broadly to prevent this occurring.[57] In the United States case of Brookfield Communications Inc v West Coast Entertainment Corporation,[58] the Court found that ‘using another’s trade mark in one’s metatag is much like posting a sign with another’s trademark in front of one’s store’.[59] This interpretation compares a physical advertisement to an invisible keyword, which risks losing sight of the consumer’s perception as the most important consideration.

It is unclear where the line would be drawn if the ‘use as a trade mark’ requirement could include trade marks that are not visible and therefore not confusing to the consumer. This interpretation could extend to the enactment of anti-dilution provisions. Anti-dilution provisions provide that infringement of a trade mark can occur through an unauthorised use of the trade mark in the absence of any deception or confusion of consumers.[60] The argument behind anti-dilution provisions is grounded in a property-based approach to trade marks, and proposes that a brand’s value rests in its uniqueness.[61] This approach suggests that even the most established and powerful branding can be tarnished by unauthorised use in circumstances where goods or services are a different class and there is no consumer confusion.[62] A noteworthy example is the explanation given to Congress by Frank Schechter that if you allow Rolls Royce restaurants, cafes, pants and candy, this would deteriorate the brand to the point that there would be no Rolls Royce brand.[63] Anti-dilution provisions are widely criticised for contradicting the consumer focus present in Australian legislation. [64]In Compute Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd,[65] it was recognised that the use of trade marks as metatags did result in Green Energy benefitting from the goodwill of Compute Technology Integrations. Despite this, the metatags did not indicate origin and were therefore not ‘use as a trade mark’. This is the preferred viewpoint which should be upheld in Australia.

4 Regulation of keyword internet advertising

It is arguable that keyword advertising has the potential to damage the health of markets: wealthy brands may gain control of internet advertisements.[66] This is because Google allows for competitors to purchase the same keywords, facilitating auctions where the use of the keyword is decided by the highest bid.[67] In addition, Google’s Trademarks Policy states that ‘advertisers are responsible for the keywords and ad content that they choose to use’. [68] Unfortunately, this is the reality of any business advertising where wealthier brands have the money or investment to saturate advertising platforms. Trade mark law is not the relevant mechanism to deal with this issue, and the well-established ‘use as a trade mark’ requirement should not be altered to cater for contemporary policy issues.

V CONCLUSION

The ‘use as a trade mark’ requirement is essential: it prevents opening a floodgate of claims and an unworkable system where individuals and businesses are unable to legitimately use any registered trade mark in the course of describing their goods and services for the purposes of internet advertising. The requirement appropriately limits the scope of trade mark protection offered by s 120 of the Act, importing an objective analysis, which correctly balances the interests of trade mark owners, competitors and consumers. The ‘use as a trade mark’ requirement should be interpreted to exclude invisible keywords to ensure that the focus of s 120 remains on the objective view of the consumer as the person applying the trade mark to the goods and making assumptions as to its origin. This interpretation promotes competition in the marketplace and prevents trade mark owners from erecting barriers to competition, which in turn maximises consumer choice.

It is arguably unjust to allow a person to benefit from the reputation of a third party trade mark by using the trade mark as an invisible key word, and it is possible that wealthy brands will gain control of internet advertising. However, trade mark law is not the correct mechanism to mediate these issues and interpretation of the ‘use as a trade mark’ requirement should not be broadened to cater for modern policy concerns. The ‘use as a trade mark’ requirement is well established under Australian law and its current interpretation is the most beneficial approach to balance the interests of the trade mark holder, consumers and competitors.


[*] Danielle is a final year Bachelor of Laws student at Curtin University.

[1] Trade Marks Act 1995 (Cth) s 120.

[2] Ibid s 17.

[3] The owner of the registered trade mark is granted exclusive rights under the s 20(1) of the Act, however these rights are limited by s 120(2) which states that the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion, and s 17 which ensures trade mark protection is limited to use in distinguishing goods and services; Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, 19–20 (Black CJ, Sundberg and Finkelstein JJ); Patricia Loughlan, ‘Trade Marks: Property Rights and Their Limits’ [2005] MonashULawRw 12; (2005) 31(2) Monash University Law Review 273, 285–7.

[4] Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 115–8 (Katzmann J); Australian Government, IP Australia ‘Trade Marks Office Manual of Practice and Procedure’ IP Australia <http://manuals.ipaustralia.gov.au/trademarks/Part_19A_Use_of_a_Trade_Mark/19A.2_Use__as_a_trade_mark_.htm> .

[5] Australian Government, IP Australia, ‘Common and Prohibited Signs’ IP Australia (17 March 2016) <http://www.ipaustralia.gov.au/trade-marks/applying-for-a-trade-mark/decide-if-you-have-trade-mark/common-and-prohibited-signs> see also Network Ten Pty Limited v TCN Channel Nine Pty Limited [2004] HCA 14; (2004) 218 CLR 273, 282, citing Stephen M Waddams, Dimensions of Private Law: Categories and Concepts in Anglo-American Legal Reasoning (2003) 175–6 who remarked ‘[a]gainst the merits of enlarging the property rights of one person or class of persons must always be set the loss of freedom of action that such enlargement inevitably causes to others’.

[6] See William van Caenegem, ‘Striking a Balance Between Protecting Commercial Reputation and Promoting Competition’ (2003) 77 Australian Law Journal 598, 601 providing that ‘to consumers, protected brands are signs indicating origin and, indirectly, certain qualities and characteristics of goods. If the law protects trade marks against imitation, the cost to consumers of ascertaining the qualities and characteristics of goods is reduced’.

[7] Professor Pendleton, ‘Excising Consumer Protection – The Key to Reforming Trade Mark Law’ (1992) 3 Australian Intellectual Property Journal 110, 119–21.

[8] Trade Marks Act 1995 (Cth) s 17.

[9] Ibid.

[10] Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 109, 19 (Black CJ, Sundberg and Finkelstein JJ); E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144, 41–2 (French CJ, Gummow, Crennan and Bell JJ); Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326.

[11] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326; The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407.

[12] Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 181 [115] (Katzmann J).

[13] Nature’s Blend Pty Ltd v Nestlè Australia Ltd [2010] FCAFC 117; (2010) 272 ALR 487.

[14] (1991) 30 FCR 326.

[15] Australian Competition and Consumer Commission v Trading Post Australia Pty Ltd [2011] FCA 1086; (2011) 197 FCR 498, 75 (Nicholas J); Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 180–1 [111] (Katzmann J).

[16] Trade Marks Act 1995 (Cth) ss 122(1), (2), 124(1).

[17] Patricia Loughlan, ‘Protecting Culturally Significant Uses of Trade Marks (Without A First Amendment)’ [2000] European Intellectual Property Review 328, 331–2.

[18] Anheuser-Busch, Inc v Budejovický Budvar, Národní Podnik & Ors [2002] FCA 390; Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299.

[19] Justice Kozinski, ‘Trademarks Unplugged’ (1993) 68 New York University Law Review 960, 973.

[20] Dentsu Aegis Network, ‘Australia Ad Spend to Hit A$15.4 Billion in 2017 with Digital Driving Growth’ Dentsu Aegis Network (16 June 2017) <https://dentsuaegisnetwork.com.au/InTheNews/Details/2017-06-16>.

[21] Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, 50 (Reeves J); CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279; Thomas Stern, ‘The Evolution of SEO Trends Over 25 Years’ Search Engine Land (24 June 2015) <https://searchengineland.com/evolution-seo-trends-25-years-223424>; see also Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008) [115.1050] where it states that the general principles relating to ‘use as a trade mark’ should be applied to the online context.

[22] Solahut Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700.

[23] Ibid 51 (Perram J).

[24] Odette Gourley and Alison Jones, ‘Trade mark use and the internet – keywords and search engine optimisation’ Corrs Chambers Westgarth (15 September 2014) <http://www.corrs.com.au/publications/corrs-in-brief/trade-mark-use-and-the-internet-keywords-and-search-engine-optimisation/> stated when considering Australian trade mark law in the context of the internet, no special principles apply and in Australia there is an application of orthodox principles in the context of search engine optimisation; Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, 19–20 (Black CJ, Sundberg and Finkelstein JJ.

[25] [2016] FCA 255; (2016) 241 FCR 161.

[26] Ibid 183 [127] (Katzmann J).

[27] Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319, 62 (Kenny J); James McDougall, ‘Keywords Are Not Trade Mark Use’ IP Wars (11 April 2016) <http://ipwars.com/2016/04/11/keywords-are-not-trade-mark-use/> .

[28] Pendleton, above n 7: ‘the term “badges of origin”, in the present context, highlights one function of trade marks and implicitly imports notions of the interests of consumers and of competitors of the proprietor in ensuring the trade mark properly carries out the function of a badge of origin – principally that the badge of origin should be accurate as to origin and involve no misrepresentation’.

[29] Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 181–2 [113]–[118] (Katzmann J); see Cooper Mills Lawyers, A guide on how to avoid trade mark infringement (31 March 2016) <https://www.coopermills.com.au/guide-avoid-trademark-infringement/> which states that ‘one of the primary aims of a trademark is to avoid customer confusion’.

[30] Loughlan, above n 3.

[31] Alexander Clark, Search Engine Statistics (10 August 2016) Smartinsights <http://www.smartinsights.com/search-engine-marketing/search-engine-statistics/?new=1> .

[32] Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, 29 (Reeves J); Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255, 60–8 (Katzmann J).

[33] Jay Landrum, “Invisible” Infringement – Metatags and Keywords Silicon Valley Law Group <https://www.svlg.com/files/invisible_infringement_metatags_and_keywords.pdf> .

[34] Chuck Topinka, ‘How Exactly Does Google Adwords Work?’ Forbes (15 August 2014) <https://www.forbes.com/sites/quora/2014/08/15/how-exactly-does-google-adwords-work/#7957bf4d7bd3>.

[35] Christopher Ratcliff, ‘What is Google AdWords and how does it work?’, Econsultancy (30 October 2014) <https://econsultancy.com/blog/65682-what-is-google-adwords-and-how-does-it-work/>.

[36] Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 191–2 [170] (Katzmann J).

[37] Ibid.

[38] Ibid 191 [169] (Katzmann J).

[39] Ibid 183 [127] (Katzmann J).

[40] Wingate Marketing Pty Ltd v Levi Strauss [1994] FCA 1001; (1994) 49 FCR 89; Mark Foy’s Ltd v Davis Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190; Musitor BV v Tansing (1994) 123 ALR 593, 594 (Davies J).

[41] [2015] FCA 554.

[42] Ibid 360–1 (Greenwood, Besanko and Katzmann JJ).

[43] Ibid 132; see also Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd (2014) 105 IPR, where the invisible use of a keyword by a metatag was found to be ‘use as a trade mark’ where the mark could be accessed and viewed by an informed internet user.

[44] Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 182–3 [123] (Katzmann J).

[45] Ibid 183 [127] (Katzmann J).

[46] Van Caenegem, above n 6, 599.

[47] [2014] FCAFC 75; (2014) 311 ALR 207.

[48] Ibid 45–7 (Besanko, Yates and Mortimer JJ).

[49] One of the objects of the Competition and Consumer Act 2010 (Cth) s 2 is to enhance consumer welfare through the promotion of competition. See also Russell Miller, ‘The Harper Review - Lets Focus on What Will Make a Real Difference’ (2 April 2015) The Conversation <https://theconversation.com/the-harper-review-lets-focus-on-what-will-make-a-real-difference-39629>.

[50] Katarzyna Czapracka, Intellectual Property and the Limits of Antitrust (Edward Elgar Publishing Limited, 2010), 37–8.

[51] Ibid.

[52] See Australian Bureau of Statistics, ‘Research Paper: Competition, Innovation and Productivity in Australian Businesses’ Australian Bureau of Statistics (9 September 2011) <http://www.abs.gov.au/ausstats/abs@.nsf/mf/1351.0.55.035> where it was found that firms appear more likely to innovate if they face stronger competition.

[53] [2004] EWCA Civ 47; [2004] RPC 40.

[54] Ibid.

[55] Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255; (2016) 241 FCR 161, 182 [121] (Katzmann J).

[56] Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 109, 19 (Black CJ, Sundberg and Finkelstein JJ).

[57] Ron Moscona, ‘Can Your Competitior Use Your Brand to Capture Internet Traffic? The European Rule on Keyword Advertising Takes Shape’ (27 June 2013) Lexology <https://www.lexology.com/library/detail.aspx?g=7abe285a-a3e6-4911-94d5-df20870da055>.

[58] [1999] USCA9 225; 174 F.3d 1036 (9th Cir 1999).

[59] Ibid 1064.

[60] Michael Handler, ‘Trade Mark Dilution in Australia? [2007] European Intellectual Property Review 307.

[61] Frank I Schechter, ‘The Rational Basis of Trade Mark Protection’ (1927) 40 Harvard Law Review 913, 825–6.

[62] Sarah Lux, ‘Evaluation Trademark Dilution from the Perspective of the Consumer’ (2011) 34(3) UNSW Law Journal Volume, 1055. Provisions of this type have been enacted in different variations in several jurisdictions, including the European Union, Canada, New Zealand, The United States and parts of Asia. See for example The Federal Trademark Dilution Act 15 USC § 1125(c)(1) (1995); Trade-marks Act, RSC, 1985, c. T-13, s 22; First Council Directive 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trade marks [1989] OJ L40/1, art 4(4)(a), 5(2) and Trade Marks Act 2002 (NZ) s 89(1)(d).

[63] Frank I Schechter, ‘Hearings Before the House Committee on Patents’ (Speech delivered at the United States House of Representatives, 72nd Congress, 1932).

[64] Mark Sumpter and Paul Sumpter, ‘Has Trade Mark Law Gone Mad?’ (2003) 3 New Zealand Intellectual Property Journal 225; Alan Smith, ‘Trade-Mark Dilution – You Can’t Laugh It Off’ (2004) 12 Juta’s Business Law 197.

[65] [2011] FCA 1319, [62] (Kenny J).

[66] This can be seen through the way wealthy brands interact with internet advertisements. See for example Andrew Griffin, ‘IPhone 6S: Samsung Galaxy S6 Google Ad Mocks People Looking For New Apple IPhone’ Independent (29 April 2015) <http://www.independent.co.uk/life-style/gadgets-and-tech/news/iphone-6s-samsung-takes-out-google-ad-to-advertise-galaxy-s6-mock-people-looking-for-apple-s-phone-10211602.html> Lauren Johnson, ‘Big Brands Are Already Targeting Their Competitors With Apple Search Ads’ Adweek (4 November 2016) <http://www.adweek.com/digital/big-brands-are-already-targeting-their-competitors-apple-search-ads-174432/> .

[67] Topinka, above n 34.

[68] Google, ‘Trademark Help for Advertisers’ Advertising Policies Help <https://support.google.com/adwordspolicy/answer/6118>; see also Google Inc v The Australian Competition and Consumer Commission [2013] HCA 1, where it was found that the ordinary and reasonable user would understand that Google was displaying other people's advertisements, as they were marked as ‘sponsored link’.


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