Internet Committee Explores Keyword Issues in Internet-Related Trademark Infringement

Published: October 6, 2021

Dominic Hui

Dominic Hui Ribeiro Hui Shanghai, China Internet Committee—Digital Asia Subcommittee

As part of INTA’s ongoing efforts to identify advocacy opportunities in the Asia-Pacific region, the Association’s Internet Committee, Digital Asia Subcommittee recently completed an analysis of “Keyword Issues in Internet-Related Trademark Infringement” in several jurisdictions.

The Subcommittee focused on areas of law related to definitions of “keyword advertising infringement” and their treatment. They concluded that, in order to protect trademark owners in a more strategic way, laws may be necessary to address this kind of infringement, as well as the liability of some third parties, such as service providers. The Internet Committee intends for this research to be a starting point for further dialogue among key stakeholders in the region around the identified issues.

Composed of seven members of the Digital Asia Subcommittee, the team researched seven jurisdictions in the Asia-Pacific region: Australia; China; Hong Kong SAR, China; India; New Zealand; Papua New Guinea; and Uzbekistan. Looking ahead, the Subcommittee will look to expand this research to additional jurisdictions.

Keyword advertising infringement is a relatively new phenomenon in Internet marketing in Asia. It aims to acquire keywords from Internet search engines to prioritize search placement. An illustrative example is a brand owner of soft drinks acquiring the keyword “XYZ” on a particular search engine. By doing so, when a user searches the keyword “XYZ” on that Internet search engine, a link to the brand owner’s website will be placed on the top of the search results.

Theoretically speaking, if a brand owner is acquiring its own names or trademarks as keywords, there should not be any disputes. However, if a brand owner is trying to obtain a keyword that is the registered trademark of its competitor, it is natural that the competitor may wish to seek remedies under existing laws and regulations.

The issue of key word advertising has been litigated in the United States for nearly two decades. It has also been litigated in the Asia-Pacific; however, the approach of courts in this region has been to address these cases under a traditional theory of trademark infringement rather than more specifically as “keyword advertising infringement.”

Most interestingly, the Subcommittee found no specific law tackling “keyword advertising infringement” in the jurisdictions that were the subject of the analysis. However, the invisible use of the trademark may make it a difficult case for a rights holder to claim trademark infringement. Rather, the trademark owner may need to rely on other grounds, such as unfair competition law in China, tort law in Australia and India, and consumer rights protection law in Uzbekistan.

The research was conducted in the form of an internal, Subcommittee survey. While there are no plans to publish a formal report at this time, the Subcommittee intends to use the information to trigger a dialogue between INTA and various stakeholders, such as brand owners, government officials, service providers, and others to see how it may be addressed in the future.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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