Foreign Enterprises Using Search Engines for Promotion Should Prevent the Risk of Trademark Infringement

Enterprises using search engines for marketing can bring competitive advantages to themselves, but these enterprises also face complex intellectual property issues. There are much controversy exits in whether the use of other people's trademarks as search keywords constitutes trademark infringement or violates the law of advertising and whether search service providers bear responsibility.

In a typical case that a prominent internet company in USA represented by Beijing Wis & Weals Law Firm against a Chinese appliance company in the trademark infringement case regarding using the trademark as search keyword, the court made a controversial judgment on the above issues. Based on this typical case, the author discusses the attributes of search advertising keywords and the types of disputes commonly found in keyword searching. 

I. Attributes of Web Search Advertising Keywords

Web search advertising keywords have three attributes: commercial, technical, and legal.

1. Commercial attributes of keywords

The commercial attributes of keywords depend on not only the huge commercial value of Internet search service, but also the inherent commercial value of specific keywords. Theoretically, any keyword has commercial value.

The commercial value of vocabulary lies in the social life information it represents and condenses. Value is created when the symbol of such information is widely used and concerned by people in daily life. This value is closely related to people's living habits and lifestyles, as well as to such factors as different regions, characters, cultural backgrounds, nationalities, and age.

Therefore, people have keen interest in keywords of high commercial value.

2. Technical attributes of keywords

Realnames Inc. of Silicon Valley, USA, invented the "Key word Search" technology which has evolved from linking domain names to searching the database of many webpage indexes captured by search service providers.

Technically, keywords are symbols that Internet users input into search engine programs. These symbols need to be processed by search engine programs in their databases, and ultimately be transformed to webpages with different degrees of association with the symbols.

Thus, the technical features of keywords are related to search software technology, leaving broad control space for service providers.

3. Legal attributes of keywords

Keyword has the indispensable function of information guidance, which is its core and essential value. The legal attributes of keywords should be defined around this function.

On many occasions, keywords are new applications of traditional logos on the Internet. The essential purpose of keywords is to try to extend the effect of traditional logos to the Internet space.

However, identifiability is not a necessary feature of keywords. From the perspective of its information guidance function, it can even be said that the features and value of keywords lie in their lack of identifiability. The real recognition is reflected in the search results, that is, the specific source of information.

II. Types of rights disputes in keyword searching

The commercial value of keywords lies in the attributes of information symbols they represent. Therefore, the conflicts of keywords mainly focus on the following three types: identification rights, generic names, and specific words.

1. Identification rights

Among this type of keywords, the most common ones are: trademark, trade name, website name, product or project name. In analyzing the causes of such disputes, the following factors should be considered: the regionalism of rights and the border lessness of the Internet, the registration and classification features of trademarks, the administrative regionalism of trade names, the randomness of website names, product or project names.

At the same time, in dealing with such disputes, we should consider the balance of interests: the right boundary of the right holder, the right of other public to use Internet services, the development of the Internet industry itself, etc.

2. Generic names

Generally, purchasing and possessing generic names as keywords should not be prohibited, mainly for two reasons:

Firstly, the value of keywords lies in the characteristics of the information symbols they condense. If it is banned, the keyword search industry will become valueless.

Secondly, some rights (such as trademarks and trade names) are prohibited from using generic names. One reason is that the value of these rights lies in recognizability, in the absence of which these rights will become valueless. However, what keywords need is providing information instead of recognition; the other reason is that these rights are somewhat exclusive while keyword search is not at all exclusive as service providers are more than one and search results may vary.

3. Specific words

Specific words mainly include words and citizen names relating to some specific public events. So far, these keywords have not been used much for commercial purpose and have rarely led to disputes. If a specific case occurs, it may be necessary to make a judgment by referring to the principles and standards applicable to the identification rights and generic names.

Ⅲ. The impact of the amendment to the Advertising Law of China on the obligations and responsibilities of search service providers

The new and old Advertising Law has different stipulations on the advertisement examination obligation of the advertisement publishers. See the following for details:

The above comparison shows that the Advertising Law of 2015 stipulates that advertisement publishers should assume the obligation of "checking" advertisements, rather than the obligation of "verifying" advertisements as stipulated in the Advertising Law of 1994. This amendment lightens the review obligation of advertisement publishers and changes the obligation of advertisement publishers from pre-event to post-event.