TRADEMARK INFRINGEMENT IN KEYWORD ADVERTISING.pdf
Creators: name: Amiresmaeil Yazdani
Publisher: name: figshare
Year: 2017
Subjects: subject: 180115 Intellectual Property Law
subject: FOS: Law
subject: FOS: Law
subject: 180124 Property Law (excl. Intellectual Property Law)

description: THESIS SUBMITTED IN PARTIAL FULFILMENT OF THE REQUIREMENT FOR THE DEGREE OF MASTER OF LAW The Internet has provided effective means of helping sellers to reach potential customers. Under Google's Adwords program, for example, an advertiser can "bid" for and purchase keywords, which are words, or phrases usually derived from trademarks that are, in most cases, well-known. When Internet users enter the trademarked keyword on the search engine of a service provider, such as Google, they are automatically linked to an advertisement sponsored by that bidder, which appears next to the search results. Through this process called keyword advertising, advertisers are able to connect with many Internet users and inform them about their goods, and services. Keyword advertising has, however, generated heated disagreements among trademark proprietors, advertisers, search engine owners, and consumers. Trademark owners, in particular, argue that by allowing advertisers to make unauthorised use of their trademarks as keywords, Google Adword program enables those advertisers to profit from the goodwill commanded by their marks. This is especially because when Internet users enter a trademarked keyword on Google’s search engine, it is usually a bidder’s website that is shown, rather than that of a trademark proprietor. As a result, trademark proprietors have filed numerous lawsuits against Google for trademark infringement. But those disputes have tested the creativity of courts in different jurisdictions whose traditional trademark laws were designed before the advent of keyword advertising. For example, it was not clear whether the use of a trademark as a keyword constituted “:use” as defined in pre-existing trademark law. The main objective of this thesis is to determine whether use of competitors trademark as a keyword, can consider as trademark infringement or not. This thesis examines how a jurisdiction, such as the European Union (EU), as well as its Member States, has grappled with this legal challenge. The research is both qualitative and library-based. It builds upon primary and secondary legal sources, including directives, regulations, judicial decisions, especially the rulings of the Court of Justice of the EU (CJEU), and academic literature. The thesis finds that, since the existing European Trade Mark Directive (TMD), and the Community Trade Mark Regulation (CTMR), which constitute the core of EU trademark law, did not anticipate .keyword advertising, the national courts of Member States faced a serious legal conundrum. This resulted in conflicting conclusions as to whether, or not keyword advertising amounted to trademark infringement. For a jurisdiction, such as Malaysia, the research did not uncover any cases on keyword advertising. But the analysis suggests that it is unlikely that keyword advertising will be held to constitute trademark infringement, or even passing off under the Trade Mark Act (TMA), 1976. <b> </b> <b><br></b> <b> </b> <b><br></b>