The US state of Utah has outlawed the use of other people’s trade marks to generate businessÂ through search engines. The plan has been called unconstitutional and impractical.
In creating a new kind of electronic trade mark with specific online protections, the state hopesÂ to get tough on one company buying the right to display search engine adverts when a personÂ searches for a rival’s products. Court cases across the US have largely backed the right ofÂ companies to purchase an association with a search for a rival’s products, though one state ruledÂ that that term must not appear within the actual advert.
Google and Yahoo! operate the most popular search advertising programmes which display advertsÂ related to the term typed into the search engine itself. The ads are displayed separately to theÂ actual search results, which are unaffected by any company’s purchase of advertising space.
Under the Trademark Protection Act, trade mark owners can apply for additional protection in UtahÂ which will mean that their marks cannot be used as a trigger by rivals. “This bill establishes aÂ new type of mark, called an electronic registration mark, that may not be used to triggerÂ advertising for a competitor and creates a database for use in administering marks,” says the Act.
The law “prohibits the use of a registered electronic registration mark to trigger advertising forÂ a business, goods, or services of the same class as those represented by the electronicÂ registration mark,” according to the Act. Both the advertiser and the seller of the advert can beÂ liable under the law.
It has been argued that the new law is impractical because in order to comply with the law, aÂ search engine that received a search request would have to determine whether the user was locatedÂ within Utah and, if so, check the search terms against Utah’s registry of trademarks to preventÂ the unlawful triggering of advertising.
The new law has also been called unconstitutional because of the strain it puts on inter-stateÂ commerce. It undermines the fundamental purpose of trademarks which is to improve consumer accessÂ to accurate information about goods and services. However, since there are constitutionalÂ problems, the law is likely to be challenged in court.
Google has one trademark policy for the US and Canada and another for the rest of the world. ForÂ the US and Canada, Google will act on complaints from trade mark holders about the use of theirÂ marks within ad text. However, it will not investigate complaints about the use of trade marks asÂ keywords. Outside North America, perhaps influenced by the French court rulings, Google will
investigate complaints about the use of a trade mark either as ad text or as a keyword. InÂ contrast, Yahoo! changed its rules on 1st March to forbid the use of a trade mark as a keyword.Â