Using foreign brand names as your own keywords - is that allowed?
Of course, companies use their own brands as keywords in online search engines such as Google. However, any company may also use third-party brand names as its own keywords. The Fairness Commission shows what is allowed - and where the limits are.
On March 23, 2010, the European Court of Justice (ECJ) ruled in a landmark legal dispute between Louis Vuitton and Google that the Internet group may also sell protected brand names as keywords for its Adwords advertising system. According to the Luxembourg ruling, this does not affect the trademark rights of the luxury goods company. Accordingly, third parties may use brand names that do not belong to them as keywords for their ads.
No infringement of trademark law
The Higher Court of the Canton of Thurgau (PO.2010.8) reached the same decision on September 11, 2011, in a similar case in which the owner of the trademark "Ifolor" sued Google. Accordingly, the booking of keywords in online search engines does not constitute trademark use. The court based its ruling on the fact that average Internet users are familiar with Google. They know that the keywords are only marginally related to their search and are often useless to them. Therefore, they would be able to distinguish between the hits in the search results list and the advertisements which are separated from them both spatially and in terms of color and which are specially marked.
No violation of the UWG
However, the limit of permissibility is exceeded if the trademark appears in the advertisement itself or in the search result and is thus used as a trademark. An advertisement may in no way give the impression that there is an economic connection between the advertiser and the trademark owner. According to the ruling of the Thurgau High Court, booking another person's trademark as a keyword also does not violate the Unfair Competition Act (UWG). If the trademark that has been entered as a keyword does not appear in the advertisement and a link to a clearly different website than that of the trademark is integrated, Internet users would hardly assume that the advertisement originates from the company whose brand name they have entered.
At its meeting on April 25, 2018, the Second Chamber of the Swiss Commission for Fairness also had to assess a case in which the misleading use of third-party keywords was a partial aspect. The complainant claimed that its competitor had generated search results for its own website using unfair keywords. The corresponding decision no. 118/18 is available on the website Fair-advertising.ch can be found in the "Decisions" section.
About the Author: Thomas Meier is the communications officer of the umbrella organization KS Kommunikation Schweiz and media spokesman for the Swiss Fair Trading Commission. In addition, readers benefit from the experience of advertising and branding expert Dr. Marc Schwenninger, who answers around 400 legal questions from agency practice every year on behalf of KS/CS and summarizes the most exciting points in his column "Schwenninger hat Recht. We publish the latest edition in the Friday newsletter.
This article is from Werbewoche 13/2018, August 17, 2018. Not yet a subscriber? Here!
