Dr Martens’ Temu lawsuit will be no walk in the park
Withers & Rogers LLP’s Laurie Bray shares her view on the trademark clash between Dr Martens and Temu. Who will win, the boot or the boot sale?
Dr Martens is suing one of the world’s fastest-growing e-tailers, Temu, for allegedly infringing its proprietary trademark rights by using its brand names as keywords in search-based advertising campaigns. While it’s unlikely to be a walk in the park, brand owners and internet storefronts worldwide will watch the case closely.
The timing of the decision to sue Temu is significant. The fast-fashion e-tailer, owned by PDD Group, has recently seen its monthly user figures in Europe rise to more than 45 million. According to the European Union’s Digital Services Act, Temu is now categorized as a very large online platform and must, therefore, do more to tackle counterfeiters and block illegal and harmful content.
Keyword advertising is a popular form of pay-per-click advertising used widely by online retailers to get maximum views of their products or services. For small and medium-sized sellers operating on platforms such as Amazon and Temu, the opportunity to position sponsored adverts in Google search results alongside websites selling the products of leading brands can drive sales by showing comparable items at a cheaper price point.
From Google’s point of view, using third-party trademarks as keywords does not in itself constitute infringement. It sees the key test of infringement as consumer confusion. For brand owners using third-party trademarks in this way, it is therefore important not to overstep the mark. For example, including the trademark in the text or header of their sponsored adverts could stray into the realms of infringement. If Google believes that consumer confusion is likely to occur, it may remove or restrict the infringing content.
The stance taken by Google is broadly in line with that of the UK courts. Case law in the UK confirms that a likelihood of consumer confusion is usually needed to uphold a claim of infringement when using a third party’s trademark in keyword advertising. In some European countries, however, the legal position weighs more in favor of the brand owner. In 2021, the Spanish Supreme Court found that mere use of a third party’s trademark as a keyword in a Google ad campaign could be considered infringement.
Since Interflora came to blows with M&S over the use of its trademarks in a Google ad campaign, it has been clear that keyword advertising will only be objectionable in the UK if it misleads consumers about the origin of the goods or services. In this case, the Court of Appeal made clear that the onus is on the brand owner to prove that the sponsored ad is infringing, rather than requiring the advertiser to prove it is not.
For Dr Martens’ claim to be successful at the High Court, it will have to prove that the use of its trademarks as keywords by Temu is likely to cause confusion for ‘reasonably well-informed and attentive internet users’.
This could prove challenging, but it does send a message to fast-growing retail platforms that facilitate the sale of lookalike products to consider carefully how their sponsored adverts will be perceived by consumers.