TO USE OR NOT TO USE A TRADEMARK, THAT IS THE QUESTION—KEYWORD ADVERTISING AND THE LEGAL RISK OF TRADEMARK INFRINGEMENT

In keyword advertising disputes, “to be or not to be” may well be the question on which the life or death of a trademark hangs. The leading Taiwanese cases involving trademark disputes over keyword advertising are the cases of 2009-Ming-Shang-Sang-11 and 2010 Ming Shang Sang Geng (Yi) Zi No. 5 of the Taiwanese Intellectual Property Court, which outline why some instances of keyword advertising cannot constitute trademark infringement, but do constitute unfair competition. However, these case holdings not only ignore the legal risk for trademark-owning businesses and defendants, but also neglect to provide ways of managing them. This article attempts to fill the gaps left by the case holdings, and to go beyond the merely legal discussion of trademark by looking at their practical implications. In particular, this article focuses on the court’s judgment on trademark requirements as they relate to keyword advertising, the relevant Taiwanese Trademark Act articles, and foreign case law (e.g., the European Court of Justice’s Louis Vuitton case and the leading U.S. trademark case) to evaluate the legal risks of regulation and conflict and dispute resolution that affects businesses (trademark owners) and infringers. This article discusses managing the legal risk of trademark disputes regarding keyword advertising in two sections—one focusing on the public sector, examining the roles of legislative and judicial agencies; and the other focusing on the private sector, looking at the roles of businesses and Internet content providers. When both sectors play their roles well, the legal risk of keyword-advertising-driven trademark disputes are diminished.