Keywords that match Trademarks: legal implications

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World & Business - Marketing
Monday, 04 June 2012 10:05

We talked about the importance of properly protecting our distinctive signs at the time of engaging online (like offline) or be treated in simple terms (see the trade name), picture (if the logo) or similar (as eg Name).

Such signs are manifested in practice in various aspects of our online presence. One example is the domain name and use of keywords (keywords) and metatags or adwords on Google. All this forms an important part of what we know as our digital identity, which is the foundation on which will settle our online reputation .

There are different tools and procedures that allow us to obtain this protection, such as, mainly, those of the domain name registration or registration of a mark . While such procedures are different, both are protected registration granted by law and, therefore, the person registering these terms shall enjoy special legal protection that includes, among other things, exclusive use.

Regarding this aspect, Article 34 of the Trademark Act contains a Spanish right to exclusive use of the mark by its registered owner. In particular, paragraph 2 states: "The owner of the trademark may prohibit third parties without his consent from using in commerce [...] b) any sign which is identical or similar to the trademark and the identity or similarity of the goods or services involving a risk of public confusion, the likelihood of confusion includes the likelihood of association between the sign and the mark. "

In the online environment, the Act extends the scope of trademark protection of "the right of the proprietor to prohibit any third party to use inconsentidamente the sign on telematic communication networks and as a domain name."

This is, in the case of a term as a mark registered in the Spanish Patent and Trademark Office , the holder can prevent third parties from using, without his consent, in commercial activities as may be advertising or other promotional activities .

The above reveals two important aspects to keep in mind when developing our business online and they are: The importance of planning adequate protection strategy intangible assets of our organization, as this will allow us to enjoy protection legal arisen for a third party intends to perform an unauthorized use of my image, and the foresight to make sure that the words, images or signs that we want to use in certain activities are not protected by rights of third parties, because in Otherwise we may find ourselves immersed in an unexpected and always unwelcome litigation.

Special impact have these warnings in the online world, where we can freely dispose of certain words and terms, by way of keywords, we use as metatags or metanames qualify when web pages (SEO), or as keywords in the service adwords or the like, that eventually we were able to recruit within our commercial strategy based on SEM.

Regarding the latter point, at the time and was passed (albeit from a perspective of the advertising rules) the practice of a company that used as adword from Google, the trademark of its competitor. Clearly, the practical effect was precisely to achieve the sponsored link appear alongside those search results that included a registered trademark of others. In this case, without prejudice to the liability exemption for Google to make available to anyone willing to bid on these words (adwords) who happen to be marks of third parties, the advertiser who finally carried out such activity I may be breaking article trademark law or other regulations quoted above to the advertiser is legally or voluntarily submitted.

In this regard, we recently became aware of a court order sanctioning a company that used your competitor's trademark as a metatag, without permission from their rightful owner, basing the penalty precisely infringement of Article 34 of Law brand .

Regarding this point, we must remember that, without prejudice to any legal constraints, the companies and their websites often take on additional commitments in the form of stamps or similar quality, restrict and sanction the possibility of free disposal certain words, in this case, foreign brands. Take for example the case of the quality seal of Trust Online , whose code of conduct, they undergo all holding such stamp, expressly provides in its Article 8.1 that "Advertising in electronic media should respect the distance rights of intellectual property of third persons other than the advertiser. In particular, the Internet, not supported the introduction into the source of hidden names (metanames) matching marks, names, labels or names of companies or services on those not holding the ownership or authorization of use. "