IN THE DIGITAL MARKETING ERA PRESENTED BY CW LING BARRISTERATLAW DVC Two Questions How can brand owners take advantage of developments in DM to enhance legal protection for brands and avoid legal liability ID: 782368
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Slide1
EVOLVING IP ISSUES IN BRAND PROTECTION
IN THE DIGITAL MARKETING ERA
PRESENTED BY
CW LING
BARRISTER-AT-LAW, DVC
Slide2Two Questions
How can brand owners take advantage of developments in DM to enhance legal protection for brands and avoid legal liability?
Has the law of trade marks caught up with developments in DM?
Slide3Basic DM Techniques
SEO
SEM
Slide4Search Engine Optimisation
“the process of affecting the online visibility of a
website
or
webpage
in a web search engine’s
unpaid results”
Slide5Search Engine Marketing
“a form of
Internet marketing
that involves the promotion of
websites
by increasing their visibility in search engine results pages
(SERPs) primarily through paid advertising. SEM may incorporate
search engine optimization
(SEO)”
Slide6Slide7Metatags
AdWords
AdSense
Google Analytics
Common SEO/ SEM tools
Slide8Metatags
Hidden tags included in the software that makes up a webpage, read by the search engines but not generally visible on the user’s screen
Problem: Can a TM be infringed by such an invisible use? Can it amount to passing off?
Reed Executive Plc v Reed Business Information Ltd
(2004)
Slide9Google AdWords
A service that allows a company who wishes to improve its visibility in the
paid section
of the SERP to “buy” particular keywords which will trigger the display of a sponsored link to the company’s website.
The company may buy – through a process of bidding – a keyword that is identical to its
competitor’s trade mark
, e.g. “
LOUIS VUITTON
”, in order to have its advertisement displayed in response to a search on the term “LOUIS VUITTON”.
Slide10Google AdSense
Offers website operators the opportunity to contract with Google for the
provision of space for advertising
on their websites. Google pays those operators (“
partners
”) for the ads displayed based on user clicks on ads or on ad impressions.
Google’s charges for providing that service to advertisers depend on the extent of
consumer interest
that is generated by the ads, as well as the type of ad. The revenue is
divided
between Google and the individual “partner”.
Slide11Argos Ltd v Argos Systems Inc
(2017)
P (Argos Ltd): well known retailer in the UK, owner of trade mark ARGOS in the UK and EU.
D (Argos Systems Inc): a US company specializing in architectural CAD; it traded under the ARGOS name which formed part of its domain name
argos.com
.
Slide12Argos Ltd v Argos Systems Inc
(2017)
Both P and D participated in the Google
AdSense
programme. As a result, P’s ads were from time to time displayed on D’s homepage.
P argued that D had sought to generate
advertising income
from a huge number of customers who
mistakenly accessed
D’s site believing it to be P’s.
P brought a claim for
infringement
of its CTM and
passing off
in respect of D’s use of the ARGOS sign in its domain name and its website.
Slide13Slide14Argos Ltd v Argos Systems Inc
(2017)
Google Analytics:
89% of traffic to D’s website
is from the UK
.
85% of UK visitors leave the website after
zero seconds
Almost no UK users click past the
landing page
.
90% of users accessed
argos.com
by
typing
the URL in directly to their web browser’s address bar, and
only 2% of traffic was search or referral.
Slide15Argos Ltd v Argos Systems Inc
(2017)
Judgment of Richard Spearman QC (112 pages), handed down on
15 Feb 2017
(1) Consent issue
(2) Targeting issue
Slide16Argos Ltd v Argos Systems Inc
(2017)
Requirement to show targeting:
Accessibility of a website : not sufficient
Objective test, but subjective intention may be relevant
Ultimate question : whether or not the objective effect of D’s conduct is that UK internet users who are reasonably well-informed and reasonably observant and circumspect will regard D’s website as being “for them”, or “aimed and directed at them”.
Slide17Takeaways
DM : indispensable marketing tool
Understanding of technology, business and consumer behaviour
Challenge : balance the interests of consumers, brand owners and their competitors
Slide18Ling Chun Wai
Barrister-at-Law
Des Voeux Chambers
38/F Gloucester Tower
The Landmark, Central
E: cwling@dvc.hk
T: +852 2526 3071
W: www.dvc.hk
The End
Thank you