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Use of a third party trademark as a keyword in search engines

ABG Intellectual Property advises its clients on the "USE OF THIRD PARTY TRADEMARK AS A KEYWORD IN SEARCH ENGINES" service.

·      Description: preventive advice to trademark holders on the design and enforcement of their digital marketing strategies by means of online referencing systems through sponsored links ads such as AdWords, which includes:

a)    The steps to be taken by our clients (advertisers) to avoid infringing competitors’ trademark rights by using third-party trademarks as keywords to improve the positioning of the advertisers’ ad, with respect to the natural results.

b)    The steps to be taken by our clients to react against infringers (advertisers) who infringe, our clients’ registered trademarks through keywords in their AdWords policies.

c)    Once an act of infringement has been detected, the management of any complaint/claim (i) through take down procedures before browsers and internet referencing providers that allows the removal of the infringing ad and (ii) through cease and desist letters to be sent to the infringers.

·      Needs to cover: the use of third-party trademarks as keywords in internet referencing services and sponsored links ads has been led to several judicial decisions rendered by the Court of Justice of the EU and the Spanish Supreme Court, which have drawn some guidelines on the requirements that such use must meet to avoid infringing third party’s rights. The legal team of ABG Intellectual Property has been a pioneer providing advice on this domain in Spain, having advised the winning party on the first case decided by the Spanish Supreme Court.

·      Risks covered: the absence of an adequate advice in this context involves the following risks:

(i)     Avoid incurring civil or criminal liability as a result of an inadequate digital marketing strategy that infringes third-party trademark rights or constitutes an act of unfair competition.

(ii)    Avoid undermining the distinctiveness, reputation or positioning of our brands in the event that third-party competitors misuse them as keywords in internet referencing services.


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