Are “tricky moves” in contextual advertising legal?
Are you familiar with the situation when the name of a competitor is used to attract attention in contextual advertising, and the link is given to your advertised website?
It seems that no one has used such low methods since the time of the “nineties”. But no! Whether they are in our hearts, or it’s not a matter of years.
It is clear that these are not the most ethical methods, but as far as they are legitimate, let's try to figure it out.
')
You may be surprised, but the law and practice have definite requirements for what is a violation and what is not. You can't play with them. To determine where is black and where is white, we need to answer a couple of questions.
First of all, you should understand what a competitor uses:
And how he uses it:
Now that we know for certain who and whatsometimes uses from us, we will study the judicial practice and the truth will surely be revealed to us.
To get started, get a portion of the evidence: the use of a trademark is possible only with the permission of the copyright holder.
It is the right holder who has the right to determine how to use the TK, independently use it at its discretion. For example, place ads, use domain names, products, etc.
At first glance, everything is clear: it is impossible to use someone else’s trademark and it is illegal to use it in contextual advertising.
From this it follows that the use of a foreign trademark (including its verbal form) as a keyword when placing contextual advertising or in the ad body itself provides a competitive advantage when selling products similar to the rights of the right holder.
But judicial practice (admittedly, it is not numerous) still makes the decision of the question of legality dependent on the way the trademark is used.
If the trademark (verbal) is used only in keywords, the courts consider that such actions do not violate the exclusive rights of the copyright holder (see the Ruling on case number A17-7691 / 2013 of August 11, 2014, the 2nd AAC).
When making such decisions, the courts proceed from the way the trademark is used.
Keywords are not shared on the Internet and are not otherwise displayed by the user. For the court, this means that keywords are not relevant to advertising. And since this is not an advertisement, the use of TK in contextual words is not a violation of exclusive rights.
In this case, the court relied on the norms of clause 2 of Article 1484 of the Civil Code of the Russian Federation, which stated that the verbal mention of someone else's trademark is not a use of this mark.
This conclusion corresponds to the legal position set forth in the Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation dated December 1, 2009 No. 10852/09 in case No. A45-15761 / 2008-8 / 270.
But! Even if the court does not recognize the use of your TK in the key words for the violation, this does not mean that you can not protect yourself from such actions of competitors.
Such actions can be qualified as an act of unfair competition, and there is such a practice.
An example from judicial practice:
In another similar case, a very interesting and correct interpretation of the legal nature of keywords is given:
The situation is different when TK is used directly in the ad. For example, as was the case with vezetvsem.ru :
Ad text (as opposed to keywords) is a standard type of advertising. And in such cases, the courts unequivocally qualify such actions as a violation of exclusive rights.
For example, in the Resolution on the case No. 56-24037 / 2013 of 05/16/2014. The 13th AAS indicated that
As part of this case (it was about the illegal use of TK "Eldorado") was awarded a serious compensation in the amount of 2 500 000 rubles . And this despite the fact that the Respondent in the case voluntarily eliminated all violations.
Of course, such amounts are not awarded in every case. In case of violation of the rights to the less well-known TK, the compensation amounted to only 50,000 rubles. (Decision on case No. 12-1125 / 2012 of 04/10/2012. AC of the Volgograd region.).
Now the truth will be revealed to us!
And yet we do not advise you to lay millions on fines and rely on chance. Time is not something to waste money - this is the time. And two - whatever the practice, the talented lawyer can always change it. And woe to you if he is not on your side.
So let's live together! Give fair advertising and compete only at the expense of the quality of your product / service.
It seems that no one has used such low methods since the time of the “nineties”. But no! Whether they are in our hearts, or it’s not a matter of years.
It is clear that these are not the most ethical methods, but as far as they are legitimate, let's try to figure it out.
')
You may be surprised, but the law and practice have definite requirements for what is a violation and what is not. You can't play with them. To determine where is black and where is white, we need to answer a couple of questions.
First of all, you should understand what a competitor uses:
- Verbal indication of your trademark (for example, Coca cola, but without a logo);
- a name (for example, an online store) that is not a trademark (since it is not registered as such);
- your TK with the logo (in case it is registered as TZ).
And how he uses it:
- in the advertisement itself (ad);
- as keywords.
Now that we know for certain who and what
TK is used
To get started, get a portion of the evidence: the use of a trademark is possible only with the permission of the copyright holder.
It is the right holder who has the right to determine how to use the TK, independently use it at its discretion. For example, place ads, use domain names, products, etc.
At first glance, everything is clear: it is impossible to use someone else’s trademark and it is illegal to use it in contextual advertising.
From this it follows that the use of a foreign trademark (including its verbal form) as a keyword when placing contextual advertising or in the ad body itself provides a competitive advantage when selling products similar to the rights of the right holder.
But judicial practice (admittedly, it is not numerous) still makes the decision of the question of legality dependent on the way the trademark is used.
If in keywords
If the trademark (verbal) is used only in keywords, the courts consider that such actions do not violate the exclusive rights of the copyright holder (see the Ruling on case number A17-7691 / 2013 of August 11, 2014, the 2nd AAC).
When making such decisions, the courts proceed from the way the trademark is used.
Keywords are not shared on the Internet and are not otherwise displayed by the user. For the court, this means that keywords are not relevant to advertising. And since this is not an advertisement, the use of TK in contextual words is not a violation of exclusive rights.
In this case, the court relied on the norms of clause 2 of Article 1484 of the Civil Code of the Russian Federation, which stated that the verbal mention of someone else's trademark is not a use of this mark.
This conclusion corresponds to the legal position set forth in the Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation dated December 1, 2009 No. 10852/09 in case No. A45-15761 / 2008-8 / 270.
But! Even if the court does not recognize the use of your TK in the key words for the violation, this does not mean that you can not protect yourself from such actions of competitors.
Such actions can be qualified as an act of unfair competition, and there is such a practice.
An example from judicial practice:
When launching pkprogress.com contextual advertising, the list of keywords turned out to be such as “Kirovets”, “tractor”, “Kirovets tractor”, “K-701”, “K-701 tractor”. At the same time, the Kirovets trademark belonged to another company.
According to FAS, the actions of the applicant, expressed in the use of the verbal designation "Kirovets" on the website, which is a trademark owned by PTZ, represent an act of unfair competition.
The objective side of unfair competition is formed by the actions of an economic entity (group of persons), that is, its active behavior in the market.
Such behavior of a person is subject to qualification as an act of unfair competition, subject to the proof of his committing acts aimed at obtaining advantages in business activities; contradicting the legislation of the Russian Federation, the customs of business turnover, the requirements of integrity, rationality and fairness; those who caused or are capable of causing losses to other economic entities - competitors (see the Resolution on Case No. 56-14567 / 2010 of October 25, 2010, the 13th AAC).
In another similar case, a very interesting and correct interpretation of the legal nature of keywords is given:
“... The plaintiff believes that from the public offer it follows that the individualization of sites occurs precisely according to the keywords used by advertisers in contextual advertising. In this regard, the use of another's trademark occurred at the time when Amayama Avto specified in the annexes to the third party agreement of the disputed trademark as a keyword for individualization on the Internet and promoting its website, which led to an increase in site traffic of the respondents.
The respondent’s use of the claimant’s bizovo trademark in its contextual advertising leads to unfair competition and confusion between the drom.ru and bizovo.ru sites and, accordingly, the homogeneous services they provide, resulting in consumers being misled about the service provider ” on the case number A51-11605 / 2013 from 03.06.2014. CIP).
If in the text of the announcement
The situation is different when TK is used directly in the ad. For example, as was the case with vezetvsem.ru :
Ad text (as opposed to keywords) is a standard type of advertising. And in such cases, the courts unequivocally qualify such actions as a violation of exclusive rights.
For example, in the Resolution on the case No. 56-24037 / 2013 of 05/16/2014. The 13th AAS indicated that
“... the Respondent’s use of Plaintiff’s combined trademarks in contextual advertising on the Internet was made for the purpose of deliberately unlawful obtaining of commercial benefits and advantages in the electrical appliances trade market”.
As part of this case (it was about the illegal use of TK "Eldorado") was awarded a serious compensation in the amount of 2 500 000 rubles . And this despite the fact that the Respondent in the case voluntarily eliminated all violations.
Of course, such amounts are not awarded in every case. In case of violation of the rights to the less well-known TK, the compensation amounted to only 50,000 rubles. (Decision on case No. 12-1125 / 2012 of 04/10/2012. AC of the Volgograd region.).
REMEMBER!
If your name is not registered as a trademark, it will be extremely difficult to attract a competitor (unless it is in fact unfair competition).Now the truth will be revealed to us!
- Using other people's trademarks in contextual advertising, you need to be prepared to receive claims from copyright holders and collect substantial amounts in their favor. If you have an unfair competitor and you have a few extra millions, then it’s better to immediately put them in the budget of your RK.
- Such a violation may occur due to the fault of the companies that provide you with promotion services. Be sure to include in the contract the obligation not to violate the promotion of the rights of third parties and liability for such a violation (in the form of compensation for the amounts collected from you).
And yet we do not advise you to lay millions on fines and rely on chance. Time is not something to waste money - this is the time. And two - whatever the practice, the talented lawyer can always change it. And woe to you if he is not on your side.
So let's live together! Give fair advertising and compete only at the expense of the quality of your product / service.
Source: https://habr.com/ru/post/298102/
All Articles