1. EVOLVING IP ISSUES IN BRAND PROTECTION
IN THE DIGITAL MARKETING ERA
PRESENTED BY
CW LING
BARRISTER-AT-LAW, DVC

2. Has the law of trade marks caught up with developments in DM?
Two Questions
How can brand owners take advantage of developments in DM to enhance legal protection for brands and avoid legal liability?
Has the law of trade marks caught up with developments in DM?

3. Basic DM Techniques
SEO
SEM

4. Search Engine Optimisation
“the process of affecting the online visibility of a website or webpage in a web search engine’s unpaid results”

5. Search Engine Marketing
“a form of Internet marketing that involves the promotion of websites by increasing their visibility in search engine results pages (SERPs) primarily through paid advertising. SEM may incorporate search engine optimization (SEO)”

7. Common SEO/ SEM tools
Metatags
AdWords
AdSense
Google Analytics

8. Metatags
Hidden tags included in the software that makes up a webpage, read by the search engines but not generally visible on the user’s screen
Problem: Can a TM be infringed by such an invisible use? Can it amount to passing off? Reed Executive Plc v Reed Business Information Ltd (2004)

9. Google AdWords
A service that allows a company who wishes to improve its visibility in the paid section of the SERP to “buy” particular keywords which will trigger the display of a sponsored link to the company’s website.
The company may buy – through a process of bidding – a keyword that is identical to its competitor’s trade mark, e.g. “LOUIS VUITTON”, in order to have its advertisement displayed in response to a search on the term “LOUIS VUITTON”.

10. Google AdSense
Offers website operators the opportunity to contract with Google for the provision of space for advertising on their websites. Google pays those operators (“partners”) for the ads displayed based on user clicks on ads or on ad impressions.
Google’s charges for providing that service to advertisers depend on the extent of consumer interest that is generated by the ads, as well as the type of ad. The revenue is divided between Google and the individual “partner”.

11. Argos Ltd v Argos Systems Inc (2017)
P (Argos Ltd): well known retailer in the UK, owner of trade mark ARGOS in the UK and EU.
D (Argos Systems Inc): a US company specializing in architectural CAD; it traded under the ARGOS name which formed part of its domain name argos.com.

12. Argos Ltd v Argos Systems Inc (2017)
Both P and D participated in the Google AdSense programme. As a result, P’s ads were from time to time displayed on D’s homepage.
P argued that D had sought to generate advertising income from a huge number of customers who mistakenly accessed D’s site believing it to be P’s.
P brought a claim for infringement of its CTM and passing off in respect of D’s use of the ARGOS sign in its domain name and its website.

14. Argos Ltd v Argos Systems Inc (2017)
Google Analytics:
89% of traffic to D’s website is from the UK.
85% of UK visitors leave the website after zero seconds
Almost no UK users click past the landing page.
90% of users accessed argos.com by typing the URL in directly to their web browser’s address bar, and
only 2% of traffic was search or referral.

15. Argos Ltd v Argos Systems Inc (2017)
Judgment of Richard Spearman QC (112 pages), handed down on
15 Feb 2017
(1) Consent issue
(2) Targeting issue

16. Argos Ltd v Argos Systems Inc (2017)
Requirement to show targeting:
Accessibility of a website : not sufficient
Objective test, but subjective intention may be relevant
Ultimate question : whether or not the objective effect of D’s conduct is that UK internet users who are reasonably well-informed and reasonably observant and circumspect will regard D’s website as being “for them”, or “aimed and directed at them”.

17. Takeaways DM : indispensable marketing tool
Understanding of technology, business and consumer behaviour
Challenge : balance the interests of consumers, brand owners and their competitors

18. Thank you Ling Chun Wai Barrister-at-Law Des Voeux Chambers The End
38/F Gloucester Tower
The Landmark, Central E: T: W:
The End
Thank you