Trademarks in Cyberspace

8 Apr 14: ICANN puts off decision on .wine and .vin gTLDs (again) - in response to concerns raised by the Governmental Advisory Committee (GAC) and the wine industry

24 Mar 14: Italy implements administrative take-down of sites selling fake goods

21 Mar 14: WIPO debates whether governments can, or should, own their country names – with mixed views

8 Oct 13: US court holds no infringement to use competitor’s trademark as a Google AdWord – because  only 1.5% of searchers actually clicked on the resulting sponsored link

11 Sep 13: Display of TM on non-Canadian website may be use of TM in Canada – where the use is in association with services provided in Canada (Smart & Biggar Fetherstonehaugh)

2 Aug 13: Governments disagree on GI protection at TLD level - Despite strong lobbying, the ICANN GAC has not removed its advisory ban on registration of geographical indications as top level domains (IP Watch)

18 Jul 13: Key topics to follow during ICANN 47 - a good summary of key issues for the Durban meeting of ICANN, including developments in the new gTLD program and discussions of Internet policy processes (Katten)

16 Jul 13: US advertisers adopt best practices for online infringement -  by reducing ad revenue to websites engaged in piracy and counterfeiting (IP Watch)

3 Jul 13: The European approach to keyword advertising – a review (Dorsey)

2 Jul 13: Norway rules 3rd party trademark AdWords contrary to good business practice - The Norway Committee for Unfair Competition has found that the purchase and use of a competitor’s trademark as a Google Adword is in breach of good business practice

2 Jul 13: US FTC warns search engines on misleading ads – The FTC has told various search engine companies to tighten up their practices when it comes to paid advertising that appears on a search results page

20 Jun 13: New proposals for opening up second level .nz domain names – Because there is no clear consensus for – or against – the allowing registration of .nz domain names directly at the second level, new proposals are being considered

7 Jun 13: Google Adwords in the UK: Use of competitors’ TMs as keywords OK… sometimes – It is OK to purchase keywords that are trade marks of third-party competitor, but caution is required if there is any room for confusion as to the origin of goods or services advertised (Reed Smith)

3 May 13: Amazon’s internal search engine use of trademarks not an infringement - A US federal court has ruled that an ‘AdWords’-like use of trademarks in an online retailer’s search engine does not constitute infringement

26 Apr 13: Use of competitor’s trademark as keyword is OK in France - The French Supreme Court has reaffirmed that a company is allowed to use its competitor’s trademark as a keyword in Google’s paid referencing service AdWords (Hogan Lovells)

4 Apr 13: Google revises AdWords policy to permit use of third party trademarks - AdWords keywords that were restricted as a result of a trademark investigation will no longer be restricted in China, Hong Kong, Macau, Taiwan, Australia, New Zealand, South Korea, and Brazil

26 Mar 13: Google not liable for misleading auto-generated search terms - A US court has ruled that automatically-generated search terms that are misleading do not constitute a common-law misappropriation or an invasion of privacy

27 Feb 13: ICANN announces launch date for Trademark Clearinghouse – The ”cornerstone of the rights protection mechanisms” built into ICANN’s new gTLD program, the Trademark Clearinghouse, will open for registrations on 26 March 2013

25 Feb 13: ICANN seeks comment on “closed generic” gTLDs - Following concerns expressed by brand owners, governments and other stakeholders, ICANN has opened for public comment the issue of whether and when applications for new gTLDs that are generic may be “closed”

19 Feb 13: German court allows Google AdWords keyword advertising - The German Supreme Court has held that keyword advertising does not constitute trademark infringement if the advertising is clearly separated from the search results (Klinkert Zindel Partner)

6 Feb 13: Google not liable for misleading AdWords says Australian High Court - Google has won its High Court challenge against the decision that it is liable for AdWords-generated search results that mislead or deceive consumers

9 Jan 13: Argentinian court rules on search engine liability - The Argentina Court of Appeals has ruled that unless web search engines have been duly notified about the existence of illicit content indexed by them, they are not liable for the content of third-party websites

13 Dec 12: Google settles with Rosetta Stone in US, leaving the fate of AdWords in legal limbo - Google and Rosetta Stone have entered into a confidential settlement agreement resolving Rosetta Stone’s claims against Google’s AdWord program (Sullivan & Worcester)

12 Sep 12: Google ‘AdWords’ case in the Australian High Court - Google’s appeal to the High Court of Australia against the ruling that its ‘AdWords’ service is misleading and deceptive has been heard, and the transcript published

20 Aug 12: Social media sites: new battlegrounds for right of publicity disputes - Social media websites are quickly emerging as the new battleground for right of publicity disputes, with the ultimate question being an old one – what are the parameters of First Amendment protections for corporate, commercial speech? (Kilpatrick Townsend)

20 Aug 12: Global pharma calls on ICANN to act against online counterfeits - The international pharmaceutical industry has called on ICANN “to take appropriate actions and ensure accountability measures in order to protect Internet users from illegitimate online sites that are engaged in the illicit sale of prescription medicines” (IP Watch)

27 Jul 12: Brand owners ‘crowdsource’ evaluation of new gTLD applications - A group of brand owners has adopted a crowdsourcing approach to the ICANN public comment process for challenging new top-level domain name applications (BNA)

27 Jul 12: .nz domain name authority proposes opening second level - The New Zealand Domain Name Commission is proposing to extend the .nz domain name space by allowing anybody to register domain names at the ‘second level’

18 Jul 12: How to dispute a new gTLD application – There are four bases for submitting a formal objection to any of the 1,930 applications that ICANN received in the first round of the new gTLD program

11 Jul 12: Google granted leave to appeal ‘AdWords’ case in Australia - The High Court of Australia has granted leave to Google to appeal the decision that found its AdWords sponsored links misled consumers.

3 Jul 12: Valid trademark defence not valid domain name defence in France - The Paris Court of Appeal has decided that while prior continuous use of a term as part of a company name, a trade name and signage could constitute a valid defence to a claim for trademark infringement, it could not justify registration and use of a .fr domain name containing that term (Hogan Lovells)

12 Jun 12: ICANN announces further details of Trademark Clearinghouse - ICANN has announced it has appointed Deloitte and IBM as service providers to the Trademark Clearinghouse, which will accept and authenticate rights information, and will support both trademark claims and sunrise services, for all new gTLDs

25 May 12: Self help remedy against use of a trademark as Google AdWord – Brand owners have a simple and practical tool to prevent misuse of their trademarks in keyword advertising.

15 Apr 12: Fourth Circuit revives question regarding use of trademarks as keywords and in Google ads - The Fourth Circuit has vacated the grant of summary judgment on the trademark infringement, contributory liability and dilution claims, persuaded by the fact that Google was aware that infringers and counterfeiters were bidding on the Rosetta Stone trademarks to use in ads and that there was a likelihood of confusion in allowing trademarks as keywords and in ad text (Lane Powell)

5 Apr 12: Google’s AdWords links “misleading and deceptive”, says Australian court - Google has been found guilty of misleading and deceiving consumers with its AdWords-generated sponsored links, on the ground that it is falsely representing that there is a connection between the business for which the user is searching and the advertiser who has selected that business’s name or trademark as a keyword.

16 Nov 11: Barrage Of Doubts Voiced On US Internet Piracy Bill – An international outcry from open internet proponents has emerged over draft US legislation, HR 3261, the Stop Online Piracy Act (SOPA), on the eve of a hearing on the bill. International critics say the bill would put the United States on the same ground as China with regards to internet filtering, undermining the US argument for internet freedom (IP Watch)

7 Nov 11: Protecting brands on Google: a practical guide – A practical guide for brand owners to addressing infringing search results by distinguishing the typical components of a search results page: organic results, location results and sponsored listings (DCC)

25 Oct 11: Australian consumer watchdog appeals Google AdWords case - The Australian consumer protection authority, the ACCC, has appealed its Federal Court action against Google for misleading or deceiving consumers with AdWords-generated sponsored links

28 Sep 11: Interflora Inc. v. Marks & Spencer plc – decision of the ECJ

27 Sep 11: ACCC v. Trading Post – Google Adwords Australian decision

1 Aug 2011: L’Oréal v. eBay – summary of ECJ Judgment – The European Court of Justice has provided clarification on the liability of companies operating internet marketplaces for trade mark infringements committed by users and on the specific questions referred to it by Arnold J (SCL)

2 Apr 2011: Interflora opinion gives brand owners keyword hope - Giving his opinion in a dispute between Interflora and Marks & Spencer, referred from the UK, Advocate General Jääskinen said that brand owners can prohibit the use of keywords containing their trade marks by competitors where consumers are likely to be confused as to the origin of the goods or services (Managing IP)