Trademarks in New Markets: Simple Infringement or Cause for Evaluation?

Are search engines liable for trademark infringement for offering trademarks as ‘keywords’ to others than the trademark owner? Is the act of displaying or arranging the display of an advertisement for identical or similar goods to that of a registered trademark that has been selected and stored by an internet service provider infringing the trademark owner’s exclusive right? Is the act of providing an information society service in e-commerce unlawfully encumbered by a flood of trademark complaints? The answer depends on perspective. This article discusses alternative ways of bridging grey areas between harmonizing legislation. It stops to ask whether, instead of how rights apply in new settings. It discusses the process of decision-making; i.e. how different approaches to interpretation affect different right positions. On the one hand, it considers trademarks as property that confers on the owner a right to exclude others, when harm is established. It asks what property protection entails for trademark owners, in theory and practice. On the other hand, it considers other interests explicit or implicit in legislation and weighs them against the legitimate interests of trademark owners, in new settings. It compares these approaches by using concrete examples from EU cases and concludes that there are alternative ways of bridging the gap between overlapping and conflicting directives.