Alarge percentage of consumers are most effectively reached by advertising on the Internet, particularly since access to various mobile devices with Internet capabilities has become very widespread in Jamaica. Google’s search engine is also regarded by many as the consummate search engine and many other websites with search capabilities pay close attention to Google’s business model.

In Europe, Google and advertisers have been put on their “p’s and q’s” as a result of several court decisions and law suits which have challenged and sought to examine the extent to which Google may operate its AdWords System. In the AdWords System, Google allows its customers to bid on keywords, which may include the trade marks of others. The advertisements of the highest bidders of a keyword(s) would appear as sponsored links when that keyword or a variation is typed into the Googlesearch box.

In one of the cases decided by the European Court of Justice (“ECJ”), the evidence showed that traders of fake goods were allowed to have their advertisements appear as sponsored links when a searcher types in the words “Louis Vuitton”.

The ECJ published its decision in the Louis Vuitton v Google case on March 23, 2010. The ECJ held that Google did not infringe the Louis Vuitton trade mark because the search engine did not itself use the Louis Vuitton trade mark to identify or indicate the origin of its own services. However, given that it is the party responsible for creating the technical conditions necessary for the AdWords System to operate, Google will be responsible for acting quickly to stop any infringing use of a trademark and will be liable if it fails to do so.

According to the ECJ, the owner/operator of a sponsored link may be sued by a trademark owner where the sponsored link appears in response to a search using the trademark as the keyword. In Europe, the trademark owner will need to establish that the sponsored link infringes the trademark by, for example, using the trademark in the course of trade in relation to identical or similar goods or services, and in the case of a similar trademark, that such use is likely to cause confusion among consumers. The same requirement would apply in Jamaica.

The world’s largest flower delivery firm, Interflora, has sued Marks and Spencer for sponsoring the words “Interflora”, “Intaflora” and other variations as search engine keywords. The ECJ’s decision in this case has not yet been published.

As Internet advertising becomes more of the norm in Jamaica, and as local search engines become more established, the following lessons to be learned from the Google experience in Europe should be noted:

1. Search engines have a responsibility to ensure that infringing use of trademarks are quickly removed from their websites. This means therefore, that operators of search engines should ensure that they have staff members that are trained to identify and responsibly handle trademark infringement issues. Google has in place a formal complaints procedure which allows trademark owners to lodge complaints.

2. Advertisers may still bid for, keywords for advertising on the Internet (and search engines may still offer products similar to Google’s AdWords System), but caution needs to be taken to ensure that there is no trademark infringement by the advertisers. Immediately after the ECJ handed down its decision (referenced above), Google advised its AdWords customers to seek legal advice.

3. Investment in developing and protecting distinctive trademarks is more important now than ever before. This investment should include taking trademark counselling from an attorney who can give valuable guidance as to the features that would make a trademark distinctive.

Yahoo Inc was sued by the owner of the trademark “Mr Spicy” because Yahoo Inc allowed a sponsored link to appear as a result for search of the keyword “spicy”. The court held, among other things, that only the plain English word “spicy” was being sponsored. The court’s decision may have been different had the trademark been more distinctive.

4. The Internet epitomises the concept of a global community. Local advertisers and search engines should be aware of the fact that because they operate in this global community they could be sued in foreign jurisdictions or by foreigners. It is, therefore, important to operate at international standards on the Internet and guidance should be taken from the Google experience in Europe, as well as, other court decisions.

As a result of the Google experience and the warning to advertisers, it has been posited that advertising has become more expensive for all trademark owners. However, it is well accepted that an effective Internet presence is fundamentally important for the success of a business. It is also very evident from the legal developments in Europe that Internet advertising carries its own unique set of responsibilities.

Andrea Scarlett-Lozer is an

Associate at Myers, Fletcher &

Gordon and is a member of the

firm’s Commercial and Intellectual Property Departments. Andrea

may be contacted via

www.myersfletcher.com