Keith Arrowsmith, Partner and head of Intellectual Property at Manchester law firm Ralli has this to say:-

This week, the European Court of Justice has provided some much needed guidance on the use of third party trade marks as internet search keywords.

Portakabin Limited is well known for manufacturing prefabricated mobile buildings. It owns a trademark for “PORTAKABIN” for use in relation to metal and non-metal buildings. Primakabin manufactures its own buildings, and also resells products made by others, including those made by Portakabin. It chose keywords “portakabin”, “portacabin”, “portokabin” and “portocabin” for its Google Adwords campaign.

This ruling makes it clear that trade mark owners CAN prevent the unauthorised use of their trade marks as keywords UNLESS the advertising enables the average internet user to ascertain whether or not the advertised goods or services originate from the trade mark owner. It also makes it clear that the advertiser can use “second hand” or “used” with the manufacturer’s trade mark.

There are some situations where a trade mark owner can still object – especially if the volume, presentation or poor quality of the seller’s goods impact on the trade mark owner’s reputation. An advertiser can also be criticised if it has replaced a manufacturer’s trade mark on the sale goods with its own, since the buyer would no longer be able to distinguish the advertiser’s goods from those of the manufacturer.

It makes no difference if misspelled versions of the trade mark are used.

We still await the Court’s view on the dispute between Marks and Spencer and Interflora, which should provide more guidance on this subject.