Evaluation Of The Use Of Someone Elses Brand In Keyword Advertising Within The Framework Of Trademark Infringement
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In keyword advertising, keywords entered into the search engine by the internet user led to the display of relevant adverts based on these words. The nature of keyword advertising is the same technology used by search engines to match keywords entered by a user with appropriate content on the internet. However, instead of matching appropriate content on the Internet, the user’s keywords are matched to an advertisement. In these adverts, advertisers can select keywords as well as registered trademarks belonging to others. As such, the advertiser may appear as a link and/or sponsor in the relevant interface as a result of a natural search made by users. The aforementioned situation may be subject to trademark infringement cases. In this article, it is evaluated whether the use of keywords in the advertisements made through keywords will be trademark infringement.
The purpose of keyword advertising is to ensure that the advertiser website appears at the top of the results ranked in the search engine. Websites that want to advertise choose keywords on the platform in accordance with the principles determined by search engines. When these selected keywords are searched by users in search engines, they encounter these links that appear as advertisements in the top row, thus easily accessing the advertiser’s website.
Keyword advertising has become popular in a short period of time and has started to be used more than other types of advertisements, but what happens in the event that there is a superior right holder over these keywords or expressions taken from search engines and advertised is a matter of debate. Thus, it is tried to attract users to the advertised websites by presenting users with options that are related or similar to the words that users search for.
Evaluation of Keyword Advertising Within the Scope of Turkish Trademark Law
When keyword advertising is evaluated in terms of trademark law, Article 7 of the Industrial Property Law No. 6769 (“IPL”) titled “the scope and exceptions of the rights arising from the trademark registration” sets out the acts that may damage the scope of the trademark right. These acts are determined as double protection, likelihood of confusion and obtaining unfair advantage.
Within the scope of the IPL, in the event that the trademark is used in keyword advertising on the internet, in order for the trademark owner to protect the trademark rights there must be (i) use of the same or similar trademark on the internet, (ii) a commercial impact caused by this use, (iii) a person using the trademark as a domain name without having a right or a legitimate connection to this use. However, pursuant to subparagraph 7/3-(d) of the IPL, it is stated that the trademark owner has the right to request the prevention of acts due to infringement of the trademark right in the event that the same or similar sign is used on the internet in the form of domain name, routing code, keyword or similar forms in a way to create a commercial impact, provided that the person using the sign has no right or legitimate connection to the use of the sign. Within the scope of these regulations, the use of the trademark by a third party in keyword advertising will also constitute a violation of the trademark right. As a matter of fact, the Supreme Court has also evaluated the use of someone else’s registered trademark in keyword advertising as a violation of the trademark right.
For instance, according to the “Çiçek Sepeti” case of the Istanbul 4th Civil Court of Intellectual and Industrial Rights, which was approved by the 11th Civil Chamber of the Supreme Court, the defendant claimed that the plaintiff’s trademarks “Çiçek Sepeti” and “ciceksepeti.com” were infringed by the use of keywords in Adwords, and the Court accepted the allegations and decided that the defendant’s actions constituted infringement of the plaintiff’s trademark right and unfair competition due to the defendant’s activities on the internet by using the plaintiff’s trademark in a way to create commercial impact.
On the other hand, the use of descriptive words in keyword advertising will not constitute an infringement of the trademark right. However, even in this case, if the descriptive word that is used is a trademark consisting of a generic name, the trademark owner will be able to protect the trademark right by claiming that the generic trademark is used in bad faith or with the aim of damaging the reputation of the trademark in cases where the trademark in question is used in bad faith.
In addition, in order to ensure trademark protection in keyword advertising, it should be accepted that the phrase “use of the sign to create a commercial impact” should be interpreted broadly in terms of the advertiser website and should be understood as arousing a desire for commercial activity on the users, so that the use of the keyword advertising system is sufficient to fulfil the condition of being used in a way that creates a commercial impact.
In line with this, according to the reasoning of the above-mentioned çiçeksepeti decision, “the defendant used the plaintiff’s trademark Çiçek Sepeti as a keyword in the Google Adwords System, as a result of which the defendant’s website was directed to the defendant’s website in the searches made with the plaintiff’s trademark in the Google search engine, thus it was understood that the defendant used the words Çiçek Sepeti, which is known as a product name in the sector, together with the plaintiff’s trademark and domain name, in a way to create a commercial impact” and it was accepted that the use of the registered trademark of the trademark owner as a keyword by the advertiser creates a commercial impact.
It is necessary to consider whether the search engine is liable for infringement of the trade mark caused by keyword advertising where the provider has been notified or knows that the functions of the trade mark have been damaged. In the decisions of the Supreme Court, it has been ruled that hosting providers will be liable if they do not take action after being notified of the relevant infringement. In the decision of the Supreme Court General Assembly of Civil Chambers numbered 2013/11-1138 E. 2014/16 K. and dated 15.01.2014 regarding Gittigidiyor, it was ruled that the aforementioned sales site was at fault for not removing the infringing content despite the warning and hosting provider also committed trademark infringement.
Due to the increasingly widespread use of the internet, keyword advertising has become popular, which allows the user to easily find the data sought by the user among the increasing data on the internet, and on the other hand, to make the website of the data owner more visible to users. While keyword advertising provides some convenience to both users and content owners, on the other hand, a keyword used in relation to a registered trademark belonging to someone else may cause infringement of the trademark rights. In order to be able to mention a trademark infringement within the scope of the IPL, it is required that the same or similar trademark is used on the internet, that this use is in a way to create a commercial impact, and that the person using the trademark as a domain name does not have a right or a legitimate connection to this use, however, among these conditions, the condition of “to create a commercial impact” should be interpreted broadly and it should be considered that the infringement occurs when the system related to keyword advertising is used. However, the use of generic trademarks in keyword advertising will not constitute infringement in terms of trademark law, provided that they are used without the intention of damaging the trademark. In addition, in cases where the trademark right is infringed due to keyword advertising, it should be accepted that the hosting providers providing the relevant advertisement will be liable if it is notified or the infringement became known to the provider.
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