Trade mark use in paid search marketing and direct liability

Abstract

The thesis considers the scope of trade mark protection against against the context of paid search marketing. The hypothesis is that ‘fair and efficient competition’ is at the heart of the balance between interested parties and between trade mark protection and between free speech. This introduces the concept of a 'virtuous cycle' in the application of trade mark law. this thesis suggests that fair and efficient competition should be the ultimate purpose of trade mark law. The concept can be furthered by protecting pro-competitive trade mark functions: the intra trade mark information function and the inter-trademark differentiation function.Thus, only where third party use third party use is likely to harm the information and differentiation functions of owners' trade marks user could be liable. In a democratic society, there is anadditional consideration:thebalance between trade mark protection and free speech.Where third parties use trade marks in non-commercial contexts, likelihood of confusion or dilution should be the result ofactual malice or calculated falsehood. These two considerations are tested against the real world context of paid search marketing. Based on the protection of pro-competitive trade mark functions and speech restriction standards, and the relevance of actual and direct context and circumstances of paid search marketing, advertisers can be liable for their use of trade marks even when they do not include trade marks in their advertisements.Search engines, however,are not responsible for their use ‘under current practices,’ whether or not trade marks are included in advertisements. The thesis supports that trade mark law and jurisprudence should transform the cycle that starts with the balance of interests and end with fair and efficient competition into a virtuous spiralwhere one feeds the other; the two are inextricably linked.