Freelancers' Questions: How to tackle websites exploiting my brand?
Freelancer's Question: I am a designer and own a small retail unit in a major city but I do most of my trading through an online store. It has come to my attention that other websites have been using the name of my brand in adverts and search engines. Is this an infringement of my trademark and what are my rights in this situation?
Expert's Answer: The internet has increased the opportunities for counterfeiters. Search engines have exacerbated this by allowing anyone to purchase a search terms that create a sponsored link. For example, if I am a soft drinks seller I can purchase the term "coca cola" to advertise my brand of drinks. So if you search for "coca cola" in Google, my brand will appear. A recent European Court of Justice decision held that is legal for search engines to sell a trademark as a search term.
If the use of the trademark is infringing you, you can ask the search engine to remove the link and it has to do so. You can also pursue the infringers separately, if they can be identified. In order to prevent third parties from using your brand to advertise fake products, you will have to monitor the internet and request the removal of links.
This is time-consuming and not the most effective way to prevent infringements. But as the law stands this is your only option short of taking out multiple infringement actions, which is expensive and not necessarily effective.
The expert was Simon Bennett, partner at Fox Williams, a business law specialist.
10th June 2010