"Keywords" and locking down on third party use of them

We all know of Louis Vuitton: the company and the brand. We all know the goods they cover. This is the function of a trade mark: to act as an indication of origin for the product bearing the brand. So when Google made the words "LOUIS VUITTON" available for third parties to purchase as Google AdWords, and when third parties starting purchasing these AdWords to guarantee that their own websites (often selling counterfeit Louis Vuitton products) popped up as "Sponsored Links" when a consumer searched for "Louis Vuitton" on Google, was this a problem? Were LVMH's trade mark rights infringed? Could LVMH do anything to stop this practice? and if so: who is liable - the third party or the search engine?

Fashionista, together with fashion brand owners no doubt, has eagerly awaited the Court of Justice's judgment on these issues to see what rights brand owners have against third party use of their marks which could otherwise damage the brand and its reputation.

Third parties can be prevented from doing so if their appearance as a Sponsored Link will make it difficult for the average internet surfer to determine whether the goods are legitimate and provided by the brand owner. So, if an internet user searching for "Louis Vuitton" sees a Sponsored Link for "Louis Vuitton bags" and is unsure whether the provider of such bags is, in fact, the brand owner, LVMH would be entitled to take steps to prevent the third party's advert from appearing - including requesting the service provider to remove or disable access to a website if the advertiser's activities are unlawful.

Google was not considered liable for making trade marks available to purchase as keywords - although this will be a question for national courts on a case by case basis and will depend on whether a service provider has played an active role over the data it stores.

Fashionista breathed a big sigh of relief at this positive news for brand owners. Whilst the test today laid down by the court is a subjective one which rests on "will the internet shopper be confused?", this decision at least acknowledges the possible damage to a brand owner if third party advertisements can pop-up in a calculated measure to piggy-back off the reputation of the brand a consumer is looking for. This decision should help to put an end to the stream of Sponsored Links for replica and imitation brand products which have until now frequently appeared when a luxury brand name was typed into a search engine.

A positive step to preserve hard earned brand reputations and another just measure to clamp down on those seeking to ride off the coattails of others.

GET LUCKY gets lucky against LUCKY

Fashionista is, of course, familiar with the fashionable US brand LUCKY from Liz Claiborne Inc. and its Los Angeles subsidiary Lucky Brand Dungarees, Inc. Fashionista must admit to not having heard of the GET LUCKY brand owned by Marcel Fashion Group, Inc. ...at least, not until now.

Fashionista suspects that the GET LUCKY brand will now enjoy a wave of free publicity and promotion after a recent summary judgment hearing at which a New York court ruled in its favour on the grounds of trade mark infringement, unfair competition, false designation of origin and false description and representation. The offending articles were men's and women's t-shirts from the LUCKY brand bearing the words GET LUCKY. The legal wrangle began in 2005 when Liz Claiborne sought - unsuccessfully - to prevent Marcel Fashion's use of its GET LUCKY trade mark (which it registered in 1998). To add to this list of complaints, the Judge also found that Liz Claiborne had breached a settlement agreement which the parties had entered into in 2003.

The result: the Judge granted a permanent injunction against Liz Claiborne "preventing the use, in commerce, of any reproduction, counterfeit, copy or colorable imitation of Marcel Fashion's GET LUCKY trade mark on or in connection with men's and women's apparel, fragrances and accessories". The trial is due to take place later this year.

Fashionista muses on the benefits of registered trade mark protection and of bringing a case to court. As Marcel appears to have the earlier right and assuming it has legitimately used its mark (or, at the least, that it did not register it in bad faith) this must be the right decision. Just because Liz Claiborne's brand is the more well know of the two, this should not be a carte blanche to use a similar mark already owned by someone else. Although Fashionista thinks that ironing out your differences business-to-business (or, lawyer-to-lawyer) must be the preferred approach - litigation clearly still has its place in terms of potential rewards: whether they relate to a sense of justice, financial compensation, or more simply, publicity you can spin to your advantage...provided, of course, that you are on the winning team.