Fagartikler fra fagfolk

The World Wide Web (www or the web) is increasingly being used for both commercial and non-commercial purposes. Consumers are now using the web as their first source of information, whether searching for information on a specific company or an organisation, or when buying goods and services, such as plane tickets, theatre tickets, books, etc. The global reach, as well as the relatively cheap, easy and fast access to the www, has turned it into the most important commercial marketing tool for traders all over the world.

Existing search tools facilitate the search for information on the web. It has inter alia been customary to search for information on the www by typing a domain name resembling the company, goods or services sought after, e.g. www.sony.com or www.theatertickets.com. However, today's users have arguably turned to other methods when browsing for material on the web. One such method is the search engines, such as Google.com, Altavista.com and yahoo!.com. These search engines locate and link to web sites matching the users preferences, and the user is accordingly able to access the preferred web sites by merely clicking on the link provided.

As well as finding material on the web via search engines, users are able to surf the web using predetermined links posted by web site owners. Most commercial and non-commercial web sites contain links to other sites, making it possible for the users to move effortlessly between locations on the Internet without knowing the URL-address[1] of the various sites.

Linking is a powerful tool, as it simplifies the use of the www. But as will be discussed in this article, after the commercialisation of the www, critics have argued that the use of linking infringes various intellectual property rights. This article will discuss the limits trade mark law may place on a web site owner's possibility to link to other webpages. Trade mark law is territorial, meaning that national law is decisive for a trade mark's validity and scope of protection. I will focus my discussion on the Norwegian Trade Mark Act, and examine how the legal situation is or should be concerning web pages directed to the Norwegian market.

The rules of unfair competition will also be discussed where applicable, as this set of rules is closely connected and often alleged supplementary to trade mark law. Furthermore, I will examine the use of trade marks in meta tags[2] and the practice established by search engines when displaying advertisements. It falls outside the scope of this article to discuss the issue of trade marks in domain names, as well as the copyright law issues that may arise.

The discussion is based on the presumption that there is no contractual or commercial relationship between the person who links from one web site (the linker) and the person who alleges a trade mark infringement (the trade mark owner), and that the trade mark holder has not technically prevented the linking to his web site. I will not examine the jurisdictional aspects of the issue.

2. Links and frames

Linking is not easily defined. As Ignacio Javier Garrote explains it, Almost every commentator has his own definition and classification of links.[3] Garrote, however, divides links into two main categories: hypertext reference links (HREF) and frames. The difference between the two has been said to be that a HREF link is an instruction to access data, while the frame is a method of displaying content.[4]

HREF links are normally divided into so-called normal and embedded links.

Normal links transport the users to another URL, displaying both the URL and the content of the linked web site. Normal links can either connect the user to the homepage of the linked web site (surface link) or to pages deeper within the homepage of the linked site (deep link).[5]

The embedded links, on the other hand, transport the content of another web site to the host site so that the content appears to be an embedded part of the host site. In contrast to the normal link, the URL of the linked site does not necessarily appear on the host site, something which makes it more difficult for users to realize that they are viewing content originating from another website.

Framing is a command in HTML[6] that enables the user to see the screen split in several smaller windows or frames. Each window is displayed on a separate portion of the screen, and functions independently to display an individual web page.[7] Just as with the embedded links, the commercial origin of the framed content could be hidden to the user, as the URL of the linked site might not appear on the host site. The framed content could instead give the impression as originating from the host site, as the host sites URL, logo and advertisements still appear on the screen framing the content of the linked site.

3. Question of applicability of trade mark law

Registered trade marks and trade marks established by use give the proprietor an exclusive right to use the trade mark commercially.[8] This means that no other than the holder may use in the course of trade the same or a confusingly similar sign for goods or services designated in the registration. It is accordingly within the exclusive right of the trade mark owner to affix the sign to the goods or to the packaging thereof, to offer or expose the goods for sale, to import or export goods under the sign or to use the sign on business paper or in advertising.[9] When deciding whether two trade marks are identical or confusingly similar, consideration has to be taken to not only the similarities of the marks as such, but also to the goods and/or services for which the two trade marks are being used or registered. The determining factor is whether the overall impression of the two trade marks causes confusion among the consumers in creating the impression that there is some sort of commercial connection between the two trade marks, or that they have the same commercial origin.[10]

The question is how these principles will apply to the practice of linking. Obviously, a trade mark owner would try to control the use of his trade mark to ensure that it does not become generic. However, linking is at the heart of the www, and it is thus very unlikely that any court would outlaw linking completely. But the limits that trade mark law may place on the practice, is far from settled.

There are mainly two issues to be raised when considering whether the actual linking could represent trade mark infringement. Firstly the design of the link itself, and secondly the overall impression of the connection between the link and the linked web site.

4. Trade mark infringement

4.1 The design of the link

A link consists of two parts: the invisible part that instructs the computer which IP-address the link refers to, and the visible part that the user clicks on in order to activate the link. The visible part could mirror the IP-address that the link refers to, but it is usually translated into a descriptive text, such as click here to visit the web site, or a logo, a picture, a slogan, an advertisement, etc. The question is whether the actual design of the link could result in trade mark infringement.

As mentioned under section 3, a trade mark gives the proprietor an exclusive right to use the trade mark commercially. Posting trade marks on a web site in connection with goods and services will have to be considered as being commercial use if the web site owner is likely to profit from the site. Such use should therefore be considered as part of the exclusive right of the trade mark owner. Accordingly, if the use of a trade mark in a link causes confusion among consumers, or if it indicates a commercial association between the trade mark owner and the web site on which the link is posted, such use should be considered contrary to the exclusive right of the trade mark proprietor. This view has been confirmed by the European Court of Justice (ECJ) in cases concerning parallel imports, whereby it has been ruled that use of a protected trade mark shall be deemed illegal if the use gives rise to the impression that there is a commercial connection between the trader and the trade mark holder.[11]

However, there are legislative limits to the exclusive right. Firstly, a trade mark is not infringed if the use is necessary to indicate the intended purpose of a product or service, provided the use is in accordance with honest practice.[12] This opens for a defence against trade mark infringement in situations where use of the trade mark is necessary for competitors to have effective access to the markets. The defence is specifically aimed at protecting traders selling spare parts, but can arguably also have importance in cases concerning linking, as linking to official web sites may be necessary for new market entrants. When deciding whether the use is in accordance with honest practice, the mere fact that a trader may take advantage from using the trade mark will not in itself be decisive.[13] Rather, the use of the trade mark should be accepted if the content or intention of the goods and/or services cannot be communicated in any other way.[14] That is, the use of the trade mark should be allowed if it is impossible to describe the goods or services offered without making any references to the protected trade mark.

Furthermore, the ECJ has decided that the trade mark holder cannot oppose the use of their trade mark on parallel imported goods unless the use of the trade mark seriously damages the reputation of the trade mark.[15] The ECJ thus provides more lenient requirements than what has been the practice according to Scandinavian case law in this respect.[16] In Scandinavia, the trader has been allowed to use the trade mark, but only in a neutral manner, and without the use of the trade mark owners logo, word sign, slogan etc.[17] A depiction of the particular products together with a representation of the trade mark holders logo would accordingly imply a trade mark infringement.[18]

The question is whether the defence has any effect on the use of another traders mark in a link. When examining this issue, one has to keep in mind the special features about the www. The access to web sites is fast and easy, and users browsing the web may not always be aware when they are leaving one commercial entity's web site and entering that of another. The consumer awareness is therefore not necessarily the same on the web as it is in the real world. Hence, the traditional rules of honest practice may not be directly applicable to trading practices on the www.

One could distinguish between neutral links and links consisting of a logo or a picture of the trade marked goods. A logo or a picture of the trade marked goods would normally appear conspicuous and dominant on a web site, something which could support an impression of a commercial connection between the two market players. Most consumers clicking on a logo or a picture of the trade marked goods would expect to enter some form of official web site. Such use should therefore be regarded as illegal and as falling within the exclusive right of the trade mark owner.

On the other hand, the trade mark owner should not be able to prevent his trade mark from being used neutrally in a link. A neutral link would be a link that describes the relationship between the parties, i.e. by stating that By clicking here you will enter Sony's official web site. By allowing such neutral links, one is still protecting the competitors' need for actual and effective access to the markets, as well as the fundamental need for flexibility in cyberspace, while on the other hand protecting the trade mark owner from degeneration of his trade mark. It should therefore be legal to use a protected trade mark in a link, if the link is neutrally designed, taking into consideration both the font used and the remaining circumstances.

4.2. The connection between the link and the linked web site

Even if the link itself is designed neutrally, the connection between the link and the linked web site could still create an impression of a commercial or contractual relationship between the two market players. A crucial factor could be what type of linking that has been used; surface link, deep link or framing. I will therefore discuss these issues separately.

4.2.1. Surface linking

As mentioned under section 3, the overall impression of the trade mark and the goods and/or services involved will be the determining factor when considering the likelihood of confusion among the consumers. Therefore, the design of the linked web site could either create or prevent the confusion, e.g. by referring to similar or dissimilar goods and/or services. If a neutral link transports the users to the official web site of the trade mark owner, no trade mark infringement can be said to have occurred. If, however, the link, seemingly being a link to the trade mark owners web site, in fact sends the user to another commercial web site, not connected with the trade mark holder, various difficulties could come to pass.

Firstly, the web site that the user is sent to could be one belonging to a competitor instead of the trade mark holder. If the web site includes logos or trade marks belonging to the trade mark proprietor, as well as offering similar goods and/or services as the trade mark proprietor, there is a risk that the users assume to have entered an official web site. In my opinion, there is little doubt that this would constitute trade mark infringement. Firstly, the consumers have been attracted to the site because of the link, causing a pre-sale confusion, the critical issue being the degree to which the trader attracts potential purchasers based on the similarities of the trade marks.[19] Furthermore, there will be a point-of-purchase confusion, as the consumers will be confused as to the origin of the goods at the time of the purchase, since they believe that they are purchasing from an authorised dealer.

In addition to trade mark infringement, linking to a false web site could be illegal according to the rules of unfair competition.[20] The main policy underlying these principles is that nobody has the right to represent his goods as the goods of somebody else. One of the key criteria is the presence of goodwill; it is the goodwill rather than the trade mark itself that is protected by the rules of unfair competition.[21] The misrepresentation caused by the false link could damage the goodwill of the trade mark owner, as well as diluting the trade mark. By using a protected trade mark, the linker attracts consumers to his goods and/or services, taking unfair advantage of the reputation of the trade mark owner. An extensive use of the trade mark could even blur the distinctiveness of the mark, ruining the trade mark owners selling power.

Secondly, the link could send the user to a web site with no connection to the trade mark holder or his competitors, but with the only purpose of making a political statement, or to ruin the image and good reputation of the trade mark. The obvious example is where a link to a family oriented web site appears from a pornographic site. Such inconsistent usage may be actionable as trade mark dilution by tarnishment and the rules of unfair competition.[22]

4.2.2. Deep linking

Deep linking allows the user to bypass the official homepage of the trade mark owner, and go directly to an internal web page instead. As a result, web site owners of the linked sites can lose income, as their revenues are often tied to the number of viewers passing through their home page. Deep linking also increases the risk of consumer confusion, as consumers bypass relevant information posted on the home page, such as company information, trade marks and logos.

The lawfulness of deep linking was questioned in the US case of Ticketmaster vs. Microsoft.[23] In this case Ticketmaster sued Microsoft for unauthorised use of Ticketmaster's name and logo on a Microsoft web site, the Seattle Sidewalk. Microsoft and Ticketmaster had negotiated but failed to reach an agreement to allow Microsoft to profit from linking users to Ticketmaster. After the negotiations failed, Microsoft nevertheless established a deep link to Ticketmaster's web site. The deep link would allow the user of the Seattle Sidewalk to bypass all policies, service information and advertisements provided on the Ticketmaster's homepage, and instead go directly to Ticketmaster's event listing to purchase tickets. Ticketmaster alleged that Microsoft, by doing so, benefited from Ticketmaster's trade mark and name. Ticketmaster also argued that the unlawful use diminished the advertising revenue available to Ticketmaster in return for an increase in Microsoft's advertising revenue. The case settled, leaving no judicial precedence on the issue. However, it is interesting to note that as a part of the settlement between the parties, Microsoft has agreed not to deep link to Ticketmaster's web sites, but rather to Ticketmaster's home page.

In another US case, Ticketmaster vs. Tickets.com,[24] Ticketmaster sued Tickets.com for having deep linked to their web pages, stating that it constituted an act of unfair competition. An interesting aspect of this case is that Tickets.com did in fact inform the user in the link itself that the link transported the user to another booking firm?s web page. The Court explained that ?The complaint also alleges deep linking as an example of unfair competition, but the Court concludes that deep linking itself (i.e. without confusion of source) does not necessarily involve unfair competition.? However, it was not rejected that deep linking could constitute unfair competition. It was accepted that Tickets.com falsely implied an association with Ticketmaster, and gave misleading information about phone numbers to obtain tickets, and exercised unauthorized control over the event pages of Ticketmaster.

The legal questions will mainly be the same for deep linking as it was for surface linking, whereas the main issue is whether consumer confusion occurs, or whether the use dilutes or takes unfair advantage of the trade mark. The rules of unfair competition will however have particular relevance, since deep linking bypasses the home page of the trade mark holder and thus deprives him of revenues. The bypassing of the homepage will make it less obvious for the user that he or she is moving from one commercial origin on the web to another. The risk for false assumption of commercial relationship is thus higher than with surface linking. In my opinion, this should result in a requirement of stricter responsibility on the linker, as he or she should do all that seems necessary to prevent the impression of a commercial connection between the two web sites. The loyal use of links, namely refraining from using logos or trade marks, as well as a requirement of a description of the origin of the linked material, could probably suffice.

4.2.3. Framing

As mentioned under section 2, the main difference between surface and deep linking and framing is that when framing the URL address and the web site design, i.e. the logo and advertisements, remains the same even after the link is activated. Instead of changing to another URL, the link collects the media required, and places it within the web page already opened. By doing so, the linker takes advantage of the linked web sites effort, by representing the linked material as if it was produced by or had some form of commercial connection with him.

Washington Post vs. TotalNews Complaint[25] serves as a good illustration of the issue. In this case, TotalNews was sued by a number of plaintiffs, among them Washington Post and Reuters New Media Inc., for having designed a parasitic web site which, instead of presenting its own material, simply republished the news and editorial content of web sites that already existed. The plaintiffs alleged that the defendant consequently unfairly attracted advertisers and users, and thus claimed that the actions were misappropriation, trade mark dilution, trade mark infringement, false designation of origin and unfair competition. The plaintiffs argued that the defendant took the entire commercial value of the material located on the plaintiffs web sites and sold it to others for the defendants own profit. They also argued that the defendant's unauthorised use of their trade marks in connection with unauthorised advertisements was likely to cause confusion and to deceive consumers as to the source of origin of the advertisements.

The parties settled the case, agreeing that TotalNews should stop framing to the plaintiff?s sites. The case will thus not serve as a judicial precedence, but could nevertheless be used as an argument against allowing framing based on trade mark law and principles of unfair competition.

Loss of revenue because of loss of hits on the home page is an issue also here. Another aspect, which was argued in the Washington Post vs. TotalNews, is that the owner of the linked web site not only risks loosing income because of loss of hits on his home page. The association that the linker creates via his frames can actually influence advertisers on the linked web site to withdraw their advertisements. If, for example, the framed site has obscene material, the advertisers on the linked site might drop their advertisements, as they do not want to be associated with such expression or with the advertisers appearing on the framed web site.

Trade mark law protects against the ?use? of trade marks in the course of trade,[26] and not the "removal" of trade marks. As framing actually includes a removal of the trade mark, one can argue that trade mark law is not applicable in these cases as such. On the other hand, if consumers assume that the products offered originate from the framer, trade mark law principles concerning consumer confusion could still come into play. However, a better solution would probably be to rely on rules of unfair competition in these cases.

5. The use of disclaimers

As mentioned above, the layout or design of the web site could both create and prevent consumer confusion concerning the use of the trade mark. An obvious question is therefore whether the use of disclaimers could prevent the alleged trade mark infringement, creating a fair use defence.

In the Norwegian case Playstation2.no[27] the Court held that the use of a disclaimer on the bottom of the web site stating that the web site does not have any commercial relationship with Sony, was not sufficient to inform the consumers that they have reached an unauthorised trader. In this case, the defendant was sued for having registered and used the domain name www.playstation2.no, as it was held to be an infringement of Sony's trade mark PS2. Important for this article, is that the Court held that by initially directing consumers to the web site by using the protected and well-known trade mark, the fact that the consumers at the point of purchase were made aware of the fact that the web site owner was not an official trader for Sony, was not sufficient to prevent trade mark infringement, as consumer confusion had already occurred.

In my opinion, the conclusion would have to be the same in the cases where consumers are directed to an unauthorised web site via a link. The fact that the web site owner informs visitors of the missing commercial link with the trade mark owner once the consumers have entered his web site, will not alone suffice. The linker has already attracted consumers to his web site using another market player's goodwill. The consumers have been made aware of and introduced to his goods and/or services by unfair use of the protected trade mark, resulting in a loss for the trade mark holder. If it was possible for market players to attract consumers this way, fewer would arguably invest financial resources in building up strong trade marks. It is therefore important to protect the trade mark holders against such unfair behaviour.

6. Search engines

Search engines function to organize information on the web. There are currently many search engines available on the www, but the most popular ones are Google, Alta Vista and yahoo!. Each of the search engines is designed differently, but they all use a special kind of software, called a spider or crawler, to locate web sites containing the word requested.

Search engines present their results as a list of hyperlinks. Hence, the user is able to access the required web site by merely clicking on the link provided. As mentioned in the introduction, the use of search engines is becoming enormously popular among users, as they present an easy and efficient way to search the web for material.

I will discuss two issues relating to the search engines practices that can be challenged by trade mark law; the use of trade marks in meta tags and the display of advertisements.

6.1. Meta tags

A meta tag is hidden information within a web site consisting of particulars related to the content of that web site. Meta tags are invisible to the user, but work as keywords for the search engines. Whenever a user types in a word in the search engine, the search engine crawls the web searching for web sites containing that word, either on the page itself or within the meta tags. The search engines subsequently index the found web pages according to the number of times the particular search word appears on each web site. Some search engines have allowed for web sites to buy a higher ranking on the hit list. Important for this article is however that a term found in a meta tag is likely to be rated as more relevant and thus be displayed more prominently in the search results.[28]

Apparently, a frequently used search word or a popular trade mark in the meta tags increases the chances for visitors to a web site. The question is however whether use of another market players trade mark in a meta tag represents trade mark infringement.

As with framing, the obvious problem with meta tagging is that the trade mark is invisible to the user. The question is whether this hidden use of meta tags could result in trade mark infringement at all due to the condition of "use" in the course of trade.[29]

According to Andrew Murray,[30] one has to distinguish between two types of trade mark claims. One is confusion among the consumers and the other is dilution of the trade mark.

6.1.1. Confusion among the consumers

When search engines display their search results they normally provide a list of hyper links to the relevant web sites, as well as displaying some key words from that site. The brief text is meant to indicate to the user whether the web site is relevant or not. A protected trade mark could be visible on this hit list, either as a part of the link itself or as an element of the reference to the web site. Such use should be regarded as falling within the exclusive right of the trade mark owner if the use of the trade mark has the potential of confusing the users as to the origin of the goods and/or services.

More difficult are the situations where the trade mark neither appears in the link to a web site nor in the text referring to that web site. The only real connection between the web site and the trade mark is thus the hidden meta tag. For the user, the impression of a commercial connection may be established by the fact that the web site appeared after his typing of the trade mark in the search engine. The question is whether this is sufficient to cause confusion among the consumers.

It is not clear whether a court would define the hidden use of a trade mark as a meta tag as use. The question will be a matter of fact: is it likely that the consumer will be confused as to the origin of the infringer's site, in the sense that he will assume it is commercially connected with the trade mark proprietor? In Euromarket Designs vs. Peters[31] the Court held that now almost any search on the net almost throws up a host of irrelevant hits. You expect a lot of irrelevant sites. Hence, consumers are used to receiving competing web sites as search results, and the average consumer is also expected to be knowledgeable about advertising practices used in cyberspace.[32] This means that even if competitors attract consumers to their web sites using protected trade marks as meta tags, it is not certain that such use should be considered as constituting trade mark infringement.

The principles of fair use discussed in section 4.1 will apply accordingly. The question of fair use was raised in the US case Playboy Enterprises Inc vs. Terri Welles.[33] In this case, Terri Welles, Playboy Playmate of the Year 1981, set up an unofficial web site, using the words ?playboy? and ?playmate? as meta tags. She also used a disclaimer on her web site, stating she was not commercially or contractually connected with Playboy Enterprises. The Courts concluded that her use of the words as meta tags was fair use, as they were generic terms, describing her title as Playmate of the Year. Playboy Enterprises could therefore not prevent her from using the meta tags based on their trade mark registrations.

The issue is not settled. However, having considered the fact that the users never see the protected trade mark and the fact that the users are expected to know that irrelevant hits may occur, the result may very well be that a fair use of trade marks in meta tags should be allowed. The problematic issue will however be the issue of initial interest confusion, raised in section 4. Furthermore, fair use of trade marks in meta tags could arguably be regarded as being in accordance with the competition rules, based on the assumption that the hidden use of trade marks is equal to comparative advertising.

6.1.2. Dilution of the trade mark

Another question is whether the use of trade marks as meta tags could be regarded as diluting well-known trade marks.[34] Dilution of trade marks could be constituted if use of the later trade mark takes unfair advantage of the earlier mark. For example, if there is no plausible reason for an applicant to use the trade mark other than its apparent connection to the protected trade mark, then it may be reasonable to believe that the trader intends to take a free ride.[35] The use of the trade mark may furthermore be detrimental to its character, undermining its uniqueness, selling power and commercial magnetism, as well as its reputation.[36]

Arguably, the use of trade marks as meta tags could be in breach of these provisions. It is important to note that the provision does not require a likelihood of confusion on the part of the consumer. This means that even in the cases where the trade mark is invisible, and even if the consumers are not confused as to the commercial origin of the web site, trade mark owners may nevertheless be able to prevent the use of their well-known trade marks as meta tags.

In Oppedahl & Larson vs. Advanced Concepts[37] the defendants had used the term ?Oppedahl and Larson? in their meta tags. Oppedahl & Larson, being a US law firm specialised in Internet Law, sued the defendants for unfair competition and violation of trade mark law. Oppedahl & Larson argued that the defendant?s use of the trade mark in the meta tags was done primarily to increase the traffic to their web site. The case ended with injunctions being issued against the defendants, and the removal of the meta tags.

6.2. The display of advertisements

As well as posting a list of hyperlinks to relevant web sites, search engines display advertisements connected with the typed search word. Hence, when typing the word telecom in the search engine, banner advertisements appear on the site, all related to telecommunication products or services. Some of the search engines have opened for sales of popular search words, such as frequently looked up words (sex and mp3) but also names and brands. The cost to the advertiser depends both on the number of clicks, i.e. the number of users that click on that advertiser's link, and the maximum amount the advertiser is willing to pay for each click.[38]

Google's policy for its so-called AdWords Service was not to sell trade marks as key words. However, in April 2004 Google announced that it had changed its policy for the US and Canada, letting advertisers include trade mark terms in their keywords and buys. Google does not allow protected trade marks to be used in the advertisements themselves. In other words, a running-shoe discounter could pay to have its advertisement appear when someone searched for Nike, but the advertisement itself cannot contain direct reference to Nike.[39] The unfortunate drawback to this practice is that whenever a user types a trade mark in the search engines, competing advertisements could appear on the users screen. As for disloyal links, and as explained above, the advertisement could lead to consumer confusion, as the consumers could be misled to believing that the advertisements shown on the screen are somehow commercially related to the entity they are looking for. Furthermore, initial interest confusion could also be established, since the competitor uses the reputation of another persons trade mark to attract consumers who would otherwise not know of the competing goods and/or services. The competitor has accordingly traded on the goodwill inherent in the trade mark.

In the US the issue has been raised in the case Playboy Enterprises, Inc vs. Netscape Communications & Excite, Inc.[40] The defendant operated a search engine and sold search words such as ?playboy? and ?playmate?. When the user typed the search word into the search engines, banner advertisements for adult entertainment not sponsored by or connected with Playboy appeared.[41] Playboy argued that the advertisements infringed their trade mark rights, as the consumers would be confused as to whether Playboy sponsored or was somehow connected with the entities behind the advertisements.

The Court found that the words ?playboy? and ?playmate? are generic words, and it would accordingly be impossible to know whether the users typing the words actually were looking for the trade mark ?Playboy? and related web sites, or if they were looking for sites generally containing those words. Playboy has appealed the decision, so the importance of this case is not yet settled.

There has also been litigation in Europe concerning the issue. Google has been the target in most of the cases. Google has been sued three times in France; by Luticiel and Viaticum (travel agencies), Luis Vuitton and in May 2004 there was a Court hearing between Google and AXA. The former of these cases is decided, the Court finding that Google was infringing the travel agencies trade marks, as the competitors advertisements were displayed when users typed the two companies' trade marks, bourse des vols and borse de voyage, as search terms.[42] The Court found that Google had to discard advertisements belonging to third parties with no commercial connection with the trade mark proprietor.

The vital point is of course whether the advertisements actually confuse the consumers or not. Some critics have pointed out that the advertisements appear more akin to walking past a shops window showing competing products.[43] To some point I agree with this opinion. If search engines continue to be the main means by which consumers search for goods and/or services on the www, then competitors should be allowed to compete and access the market by showing themselves as offering competing products and/or services. On the other hand, competitors could rather opt for generic terms as search words instead of someone else's property. Using a trade mark as a search word could potentially dilute the trade mark, causing consumer confusion and taking unfair advantage of the reputation of the trade mark holder, as mentioned before. There is also a risk that the allowance of competitors to use trade marks as search names will weaken the strength of trade marks as such and accordingly reduce the markets willingness to invest in brand building. The Courts should therefore be careful when drawing the line between the lawful and unlawful use of trade marks as keywords for search engines.

7. Conclusion

When trading on the www, the risk for trade mark confusion is greater than in the real world. On the www users are only a click away from new web sites, new commercial origins and new goods and services. It is therefore important to create clear judicial guidelines in order to safeguard consumer and business confidence in e-commerce.

The practice of linking is part of the very essence of the www, and Courts should therefore be careful when drawing the line between lawful and unlawful use. It is nevertheless desirable to safeguard the commercial interests of trade mark proprietors, as well as consumer confidence in e-trade. Links should therefore be allowed if they are neutrally designed and in accordance with honest practice. Hence, logos and pictures of trade marked goods should not be allowed as links. If deep links are being used, the linker might even be obliged to describe in the link whether the user will enter an official or unofficial web site. The overall impression will be decisive, but as described above, a disclaimer alone might not suffice to avert an infringing act.

The practice of search engines can cause particular problems for trade mark owners, and the boundary between lawful and unlawful use of trade marks as references is hard to define precisely. However, both American and European Courts seem willing to regard parasitic actions as in violation of either trade mark law or principles of fair trading. We still have to wait for further guidance on the issue, but the increasing trade on the www could force Courts to draw a more liberal line, accepting the appearance of competing advertisements activated by trade marks as search words.

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Footnotes

[1] Uniform Resource Locator, the web address of all documents on the www.

[2] See section 6.1.

[3] Ignacio Javier Garrote, Linking and Framing: A comparative Law Approach , E.I.P.R. 2002 (4), p. 184.

[4] Hasan A. Deveci, Hyperlinks Oscillating at the Crossroads , Computer and Telecommunications Law Review, 2004 (10), p. 82.

[5] Hasan A. Deveci, op.cit. , pp. 3 4.

[6] HyperText Markup Language

[7] Garrote, op.cit. , p. 185.

[8] The Norwegian Trade Mark Act (3 Mars 1961 No. 4) section 1.

[9] Ibid., section 4.

[10] Sabel vs. Puma, [1997] E. C. R. I 6191, C-251/95.

[11] Bayerische Motorenwerke AG and BMW Nederland BV vs. Ronanl Karel Deenik, Case-63/97, para. 64.

[12] The Norwegian Trade Mark Act section 4.2 and section 5. See also NOU 2001: 8 Lov om varekjennetegn med motiver fra Varemerkeutredningen II, pp. 6869.

[13] Bayerische Motorenwerke AG and BMW Nederland BV vs. Ronanl Karel Deenik, Case-63/97, para. 53.

[14] Ibid, para. 60.

[15] Perfums Christian Dior SA and Perfums Christian Dior BV v Evora BV, Case-337/95, para. 48.

[16] Ole Andreas Rognstad, Forholdet mellom retten til parallellimport og nasjonal regler om markedsføring, Nordiskt Immateriällt Rättsskydd (NIR) Nr. 3/2000.

[17] Birger Stuevold Lassen, Oversikt over norsk varemerkerett (Universitetsforlaget, 1997), pp. 423424.

[18] Ole Andreas Rognstad, op.cit.

[19] Blockbuster Entertainment vs. Laylco, 869 F. Supp. 505, 33 U.S.P.Q.2d (BNA) 1581, 158687.

[20] The Norwegian Markting Control Act sections 1 and 8a.

[21] Caroline Wilson, Intellectual Property Law (London, Sweet & Maxwell, 2002) p. 42.

[22] Salvatore Guerriero and Manny Pokotilow, Trademark & Copyright Implications of Hypertext Linking, www.crbcp.com/TM-HyperteLinking.htm . See the Norwegian Trade Mark Act section 6.2 and the Norwegian Marketing Control Act section 1.

[23] CV 973055 RAP.

[24] U.S. D.C.California, August 10, 2000.

[25] 97 Civ. 1190 PKL.

[26] The Norwegian Trade Mark Act section 1 and section 4.

[27] Sony Computer Entertainment Europe Ltd v Multimedia Import Norge, August 20, 2001, Nordhordland County Court.

[28] Lilian Edwards & Charlotte Waelde, op.cit. , pp. 174175.

[29] See section 4.

[30] Andrew Murray, The Use of Trade Marks as Meta Tags, International Journal of Law and Information Technology, Vol. 8 No. 3, Oxford University Press, 2000.

[31] UK High Court of Justice, 6 and 7 July 2000.

[32] Andrew Murray, op.cit. , s. 3.1.

[33] DS Cal. Case No. 98-CV-0413-K (JFS) 4/22/98.

[34] See the Norwegian Trade Mark Act section 6.2.

[35] Lionel Bentley and Brad Sherman, Intellectual Property (Oxford University Press, 2003), p. 832.

[36] Lionel Bentley and Brad Sherman, op.cit. , p. 833.

[37] US Civil Action No 97-Z-1592).

[38] Womble and Carlyle, Keyword Sales Spawn Trademark Disputes, www.wcsr. com/CM/News%20Bites/NewsBites1769.asp

[39] www.clickz.com/news/article.php/3 345 821

[40] 55 F. Supp. 2d 1070, 52 U.S.P.Q. 2d 1162 (C.D. Cal. 1999).

[41] Womble And Carlyle, op.cit.

[42] Womble And Carlyle, op.cit.

[43] Lilian Edwards & Charlotte Waelde, Law and the Internet (Hart Publishing, 2000), p. 180.