What are keywords? It is a practice used by inter alia GoogleAdwords and Amazon and it is related to search engine optimization. There are benefits for both buyers and sellers but what is the impact on trademarks?
What does Google & Amazon do? They use algorithms to match the keyword and product apply keyword matching options
What do sellers/advertisers do? They use trademarks owned by third parties as so-called keywords and, in the case of Google, only pay when their advertisement is clicked on (‘pay-per-click’)
The benefit for the seller is increased sales and for the buyer it is an enhanced shopping experience
Google and Amazon both have policies regulating this practice which is quite comprehensive and addresses e.g. content and format but I will focus in the trademark aspects:
GOOGLE regards unauthorised use of a trademark as a policy violation.
AMAZON requires the seller to have ‘explicit permission from the trademark owner’.. By the same token they exclude brand names that have become a generic term for the product in question e.g. Xerox, Hoover etc. It also has a trademark registry process whereby trademark owners can list their trademark and thus enhance the protection of its trademark.
The courts overseas seem to link the keyword trademark issue with the principle of confusion (see my previous article).This came to the fore in the leading case of Marks & Spencer vs Interflora in the UK where the former used the word ‘interflora’ without reference to or the approval of the owners of the well know florist brand. It stated that ‘the reasonably well-informed and reasonably observant Internet user could not necessarily discern from the advertisements concerned that M&S was not part of the Interflora network’. Accordingly they ruled in favour of Interflora.
South African case law – in the case of M-Systems vs. Cochrane Steel in the High Court Gauteng 2014, in which the issue was with the use of the word ‘Clearvu’ by M-Systems as a key word, a word used Cochrane. The court followed the Marks & Spencer vs Interflora ruling that use by a competitor is acceptable unless it leads to confusion and in this case they felt there was no confusion.
However note that at the time of the judgment the Cochrane application to register ‘Clearvu’ as a trademark was still pending. The ‘jury is still out’ on the use of keywords that are registered trademarks
Please note that each case must be reviewed on its merits and the above cases are not ‘blue prints’.
It could furthermore be argued that an advertiser who does not comply with the Google & Amazon policies mentioned above, is not only in breach thereof but would be hard-pressed to evade a trademark infringement argument.
© ADV LOUIS NEL
t/a Louis-THE-lawyer
July 14 2025
DISCLAIMER - Each case depends on its own facts & merits - the above does not constitute advice - independent advice should be obtained in all instances
LOUIS’ LEGAL ADVICE CLUB (‘LAC’) – obtaining legal advice & guidance can be quite costly (See below*) hence my LAC via which you can obtain an hour’s legal advice for R750, 00 per month once you’ve joined AND the fee for additional hours is R2 000 per hour! Furthermore you are dealing with a lawyer who has been in tourism since 1982!
* The AVERAGE hourly rate is R2700 (https://www.myggsa.co.za/how-much-do-lawyers-charge-per-hour-in-south-africa/)
TRADE MARK ARTICLES BY louis-THE-lawyer: INSERT #7 - LIMITATIONS ON TRADE MARKS YOU MAY REGISTER
There are various prohibitions and limitations on your choice of a trade mark – it is imperative that you take note of these before you get passionate about a word, phrase or logo that you (and/or your associates) would like to use and/or register as it could save you a lot of time, heartache and money.
These challenges can broadly be categorized as absolute whereas others may be marginal and may be allowed by the trade mark registrar subject to certain disclaimers.
Here are a few (i.e. it is not an exhaustive list) of the primary prohibitions and limitations you should bear in mind:
- It (i.e. the trade mark) is not be capable of distinguishing your products or services
- It is commonly used in trade and industry
- It is or may be confusing especially with reference to similar existing trade marks
- It immoral, offensive or in breach of the law
- It depicts or contains international flags, symbols or national monuments
- If you have no bona fide intention to use or right to claim ownership
- It is false and misleading - in this context is must be noted that - South Africa’s food, alcohol and agricultural laws all contain a similar provision prohibiting the use of false and/or misleading descriptions of the relevant commodity. These prohibitions extend not only to descriptions that are applied to the labels of these commodities but also extend to the advertising thereof.
Let’s consider a court case which addressed the issue of confusion – this arose in the following case - A jeweller called Shimansky has a trade mark registration for the mark Evolym for jewellery. A competitor called Browns, The Diamond Store, started using the trade mark Evolve for jewellery. Shimansky instituted an infringement action arguing that the two names are confusingly similar - below is a very brief extract of some of the key issues focussing on the ‘’test’ the courts will apply:
You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods
The impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the goods
This notional customer must be conceived of as a person of average intelligence having proper eyesight and buying with ordinary caution.
The comparison must be made with reference to the sense, sound and appearance of the marks.
The marks must be viewed as they would be encountered in the market place and against the background of relevant surrounding circumstances.
The marks must not only be considered side by side, but also separately.
Is there a reasonable likelihood of confusion if both are to be used together in a normal and fair manner, in the ordinary course of business?
Applying the above, the judge found in favour Browns and concluded that there was no likelihood of confusion, essentially for the following reason: ‘As jewellery is an expensive product, the likely customer is a discerning one, someone who is unlikely to be as easily confused as the purchaser of a cheap supermarket item’
An extract from another case namely Dinnermates (Tvl) CC v Piquante Brands International (Pty) Ltd and Another is worth noting:
There must be "consideration of the main or dominant features of the marks in question ... as they would likely impact on the mind of the consumer"
My next insert will deal with the use of keywords
I would like to acknowledge information and inspiration of Spoor & Fisher
© ADV LOUIS NEL
t/a Louis-THE-lawyer
May 04 2025
DISCLAIMER - Each case depends on its own facts & merits - the above does not constitute advice - independent advice should be obtained in all instances
LOUIS’ LEGAL ADVICE CLUB (‘LAC’) – obtaining legal advice & guidance can be quite costly (See below*) hence my LAC via which you can obtain an hour’s legal advice for R750, 00 per month once you’ve joined AND the fee for additional hours is R2 000 per hour! Furthermore you are dealing with a lawyer who has been in tourism since 1982!
* The AVERAGE hourly rate is R2700 (https://www.myggsa.co.za/how-much-do-lawyers-charge-per-hour-in-south-africa/)