Intellectual Property and Trademarking Advice
Whether you're an entrepreneur or a business, our specialist team can help you find the right protection for your intellectual property.
Some form of intellectual property will be owned by every business, it could be a design, shape, brand or process.
You need to protect your intellectual property from unauthorised use and make it an asset to your business. We can provide advice and assistance to you on the following:
- Business start up and brand management; copyright, designs, patents and filing trademarks
- Intellectual Property franchising and licensing
- Drafting and negotiating Intellectual Property Agreements
- Enforcement against infringement of your intellectual property rights
We are frequently called upon to advise in these areas and have panels of trusted specialists.
Trademarks - Google and brand searches
The European Court of Justice (ECJ) made a landmark decision in the case of Google France SARL, Google Inc [C-268/08 to C-238/08] 23rd March 2010.
The decision concerned the typing of search terms into a search engine, such as Google. The search engine displays sites corresponding to the term.
If you want a sponsored link, you can pay the search engine so that your details come up when certain search terms are put in. What some advertisers on Google have been doing is to pay for a sponsored link which might in fact be someone else's name.
Interflora had trademarked their own name, but when a search engine search is made a sponsored link for Marks & Spencer flowers will appear. Plainly, Interflora were not happy about this and had brought the case in the European Court of Justice to determine liability.
The European Court of Justice basically made four findings:- (i) The search engine provider is not liable for trademark infringement; (ii) The third party advertisers, in this case Marks & Spencer Flowers Online, are potentially liable for trademark infringement as they had selected someone else's trademark as a key word. (iii) The European Court of Justice, however, made it clear it will not be in every case where this occurs that there is any liability for trademark infringement, because it depends on the effect of the key word and the sponsored link coming up, on the internet user; (iii) The search engine provider may be liable in some of the jurisdictions, not relevant to this news article.
The conclusion is that the law is still struggling to catch up with the world wide web, in respect of regulation, and intellectual property and trademarking are particularly difficult areas. It is critical that those who operate a business through the world wide web should take legal advice on branding, and trademarking so that they are able to deal with any difficulties that arise out of the use of such names, particularly with regard to competitors.
The detailed European Legislation on the issue is contained in the E-Commerce Directive [2001/31]. See also Trademarks Directive [89/104, article 5].
Our Expertise
Pinney Talfourd LLP can advise on all these areas, and uses panels of trusted specialists in respect of trademarking and branding. In fact we have recently been instructed in a case where this was precisely the case. Our client had a website address which was the name of their business, a competitor paid to use our client's name as a sponsored link to their site.
Are they allowed to do this? In practical terms, the search engine provider allows this. If, however, the wording used has been trademarked, there is a reasonable prospect that the search engine provider will not allow it.
Please contact us to discuss your specific requirements so that we can help you to ensure your intellectual property is as safe as possible.
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