IP Court rules in favour of Google in keyword case

On January 24 2013 the Intellectual Property Court rendered a decision in favour of Google International LLC in a trademark infringement case involving the use of trademarks as keywords.

The plaintiff, Gorgeous Space Co Ltd, filed a lawsuit against Google for trademark infringement. The plaintiff is the proprietor of the trademark GORGEOUS SPACE in Chinese (Registration 1316081). The plaintiff alleged that Google had sold the mark to another company as a keyword on its search engine, which misled customers who were looking for the plaintiff's website. The plaintiff sent a cease and desist letter to Google, but the latter did not remove the keyword advertisements. After receiving the cease and desist letter, Google permitted another three companies to use the mark as a keyword to promote their products/services on the search engine.

The plaintiff alleged that use of the mark as a keyword was trademark use. When consumers searched for the plaintiff's website with the keyword at issue, other companies' websites were listed among the search results, which caused confusion among consumers. The latter were either confused or misled into believing that those companies cooperated with the plaintiff. Moreover, since the plaintiff's trademark had become famous, other companies tried to use the keyword at issue to mislead consumers into visiting their websites in order to generate some profit.

Google argued that its keyword advertising service consists in selling 'ad space' to an advertiser, and not in selling a trademark. Google provides ad space to the advertiser, which then selects the keywords. When consumers use the keyword selected by the advertiser, its advertisement will appear on the search result page as a sponsored link. Google claimed that providing ad space to advertisers did not constitute use as a trademark. In adition, the advertisers bought ad space from advertising agents, not from Google. Google did not select any keyword or draft any advertisement for the advertisers.

The Intellectual Property Court ruled in favour of Google based on the following reasons:

• A sign is used as a trademark when it is 1) actively labelled as a trademark, 2) intended to promote the sale of goods and/or services; and 3) capable of being recognised by the general consumers as a badge of origin. Use of a sign merely to describe the goods or services at issue does not meet these requirements under the law.
• In this case, the web pages submitted by the plaintiff showed use of the mark only as part of advertisements placed by the advertiser, and could not be identified by the general consumers as use of a trademark. The keyword, which is identical to the trademark, was typed in by the internet user - and not by Google or by the advertiser.
• Given that Google's conduct could not in any way be considered as use of a trademark or be seen as causing confusion on the part of consumers, there was no trademark infringement under the law.

According to Google's revised trademark policy, which came into effect on April 23 2013, keywords that were previously restricted as a result of a trademark investigation will no longer be restricted in Taiwan. The impact of Google's new policy on owners of Taiwanese trademarks is worth further attention.

Joseph S Yang, Lee and Li, Taipei