Setting Other Party’s Trademark as the Search Keyword on Internet

If you type “金夫人” on the search engine Baidu, the first three links show “金夫人GOLDEN LADY” and relevant pictures; the official website of the trademark right owner Company J and its relevant information; and the promotion information with the words as “南京婚纱摄影领军品牌M公司”. Company J filed a lawsuit against Company M and Baidu by claiming that both parties had jointly infringed its trademark right and constituted false propaganda.

The similar cases are not rare. More and more companies are using internet for promotion. In order to attract attention, some companies tried to stick a “tag” by using other party’s trademark. If a party sets other party’s trademark as the search keyword for its own website, whether such behavior shall be deemed as a trademark infringement?

The root reason is whether such behavior is a “Trademark Use”. Article 3 of the “Implementation Regulations for the Trademark Law” stipulates that the use of trademarks include the use of trademarks on goods, goods’ packaging or containers and transaction documents, or the use of trademarks in advertisements, exhibitions and other business activities, which could be used to distinguish the source of the goods. Although there are some exceptions, for example, the judgment of the first instance on the “金夫人” case, the more common opinion in the judicial practice is that to set other party’s trademark as the search keyword shall not be deemed as a “Trademark Use”. The reason is that to determine a “Trademark Use” shall analyze whether setting a trademark as a symbol to the public to distinguish the source of the goods or service. (Quoted from (2017) Su Min Shen No.2676) For example, the judgment of the second instance on the “金夫人” case, points out that Company B used “金夫人” as the search keyword, however, its official website did not use this trademark as a commercial symbol to be displayed to the users; in addition, there were not any relevant descriptions words which related to “金夫人”; so the normal internet users could definitely distinguish the two parties even Company B had used such search keyword. In another example, in the case (2019) Xiang 01 Min Chu No. 210 judgment, the court determined that the defendant used “近卫军” as the search keyword, however this word was not used separately which did not have the function to distinguish the source of the goods, and this was not a “Trademark Use”, so the defendant had not constituted a trademark infringement.

Therefore, if a party only set other party’s trademark as the search keyword, normally, such behavior would not be deemed as a trademark infringement. However, if the title or content of the relevant promotion links have used other party’s trademark as a commercial symbol, which could be used to distinguish the source of relevant goods or service, and easily causes confusion, then normally such behavior would be deemed as a trademark infringement. If a party set other party’s trademark as the search keyword, there is a more serious risk, which refers to the unfair competition. For example, in the “近卫军” case hereinabove, the court held that although the defendant had not constituted a trademark infringement, as a competitor, the defendant used “近卫军” as the search keyword to develop the market, which might bring commercial infringement risk to the plaintiff; and the defendant’s behavior will objectively decrease the amount of the plaintiff’s target clients, which might bring a negative effect to the distinctiveness of plaintiff’s trademark. In the case (2016) Zhe 01 Min Zhong No.5964, the court held that the defendant used the plaintiff’s trademark as the search keyword for its own website, which would add clicks to its own website, affect the clients’ choice, bring potential commercial opportunities to itself, and take possession of partial of the plaintiff’s commercial benefits directly or indirectly, so this was a unfair-competition behavior.

In summary, while setting the search keyword, it is recommended to check whether the search keyword planned to be used has been registered by competitors in advance. If a company has used the search keyword which is as similar as other party’s trademark, in order to distinguish the source of goods or service, it would be better to avoid using the symbols which are the same or similar to other party’s trademarks. In addition, if a party found a competitor had used its own trademarks for commercial usage, it is recommended to collect relevant evidence, and take corresponding measures as needed, such as report to the administrative authorities or file a lawsuit.

Trademark in this article refers to the registered trademark.