Trademarked keywords do not lead to confused customers

A court in America has ruled in favor of the advertiser in a keyword/trademark violation lawsuit.

In the case, J.G. Wentworth SSC Ltd v. Settlement Funding LLC, it was held that the defendant's use of the plaintiff's trademarks as keywords for Google AdWords advertisements and in the keywords meta tags of their web sites did not violate the plaintiff's trademark rights. In the court’s opinion the activity "create[d] no likelihood of confusion as a matter of law."

Despite dismissing the case, the court was of the opinion that the "defendant’s participation in Google’s AdWords program and defendant’s incorporation of plaintiff’s marks in its keyword meta tags constitute trademark use under the Lanham Act."

In other words, in contrast to some court rulings, this court ruled that using trademarked terms as AdWords and meta-tag keywords meets the "use in commerce" requirement of a trademark violation despite the fact that the defendant's use of the marks was "invisible to potential consumers" and therefore did not actually directly identify any goods or services.Interestingly, their very invisibility really underpinned the court's rationale for its finding that there was no likelihood of consumer confusion because the trademarks themselves appeared nowhere in the defendant's advertisements and also did not appear on the defendant's web sites.

In addition, the court stated that the very nature of search engine results precluded such a finding:

Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of plaintiff.

It may be useful to note that in Singapore, using a third party’s trademark as a search term in a generic or descriptive manner is allowed. It is also allowed even if it is without the owner’s permission, if the sign is used to indicate (among other things) kind, quality and value (provided that the goods are not counterfeit goods). (see the Singapore Trademarks Act and the Singapore Electronic Transactions Act).