ABSTRACT
The discussion on the ‘use’ requirement under trade mark law must begin with a reference to the Agreement on Trade-Related Aspects of Intellectual Property Rights, which defines the scope of trade mark rights and has shaped trade mark protection under national and regional regimes across the world. Google’s use of keywords corresponding to trade marks amounted to use in the course of trade. The difficulty in imposing liability on intermediaries is brought about by the stringent ‘use’ requirement that must be satisfied before the unauthorised use of a trade mark by a third party can be regarded as an infringement. The ‘commercial communication’ requirement has effectively rendered the Trade Marks Directive inapplicable to internal, technical and invisible uses of trade marks on the part of intermediaries providing keyword advertising services. One of the first trade mark infringement cases to be filed against an internet intermediary questioning the legitimacy of the practice of keyword advertising was Wilson v Yahoo!.
