Apple Being Sued in Europe Over 'iWatch' Ad Campaign on Google

Irish software development studio Probendi is suing Apple in a Milan court for using its "iWatch" trademark in Europe as part of a Google AdWords campaign, reports Bloomberg. Apple has been paying for sponsored links on Google in an attempt to redirect users that search for "iWatch" to the Apple Watch website, in order to avoid missing out on customers that search for the wrong product name.
“Apple has systematically used iWatch wording on Google search engine in order to direct customers to its own website, advertising Apple Watch,” says a tribunal filing obtained by Bloomberg. “Apple never replied to our requests and objections, while Google said they are not responsible for links.”
probendi-logo
"iWatch" was a commonly used name to refer to Apple's much-rumored smartwatch before it was released, however the device was ultimately named the Apple Watch. Apple filed for "iWatch" trademarks in Japan, Mexico, Russia, Taiwan, Turkey and other countries, but Probendi has owned the trademark in Europe since 2008 for its health and safety communication software.

iWatch Google
Google's AdWords trademark policy states that it "will investigate and may enforce certain restrictions on the use of that trademark in AdWords text ads," but the company has yet to take any action against Apple. As of writing, searching for "iWatch" on Google in France, Germany, Italy, Spain, the United Kingdom and multiple other European countries still displays Apple Watch sponsored text ads.

Probendi originally planned to capitalize on Apple's announcement of the Apple Watch last year by using its "iWatch" trademark in Europe to launch its own Android smartwatch, but company director Daniele Di Salvo now says the project is “in standby.”

A hearing in the iWatch case is scheduled for November 11.



Top Rated Comments

(View all)
Avatar
14 months ago

Probendi originally planned to capitalize on Apple's announcement of the Apple Watch last year by using its "iWatch" trademark in Europe to launch its own Android smartwatch ('http://www.macrumors.com/2014/10/29/probendi-android-iwatch/'), but company director Daniele Di Salvo now says the project is "in standby."


This bit paints a picture.
Rating: 11 Votes
Avatar
14 months ago
This is quite a silly lawsuit. Oh well, nothing like a company that is struggling to stay in business sue Apple to try and stay afloat.
Rating: 8 Votes
Avatar
14 months ago
Apple Watch = a watch.

iWatch = health and safety communication software.

Where is the scope for consumer confusion with their products / services, exactly?

Move along, Probendi.
Rating: 6 Votes
Avatar
14 months ago
I own an online advertising agency that manages Google Adwords ads for many clients and I'm a Certified Google Adwords Professional. You can bid on any trademarked keyword, but you can not include the trademarked word in your ad.

The people who manage Apple's ads on Google did nothing wrong here.

Anyone who does this for a living knows these specific details about Google's advertising policies, so it's a level playing field. For example, Probendi (or anyone else) could even bid on the keyword "apple watch" and there's nothing Apple can do about it as long as "apple watch" isn't anywhere in the ad text.
Rating: 5 Votes
Avatar
14 months ago
So Coca-Cola is not allowed to use 'Pepsi' as a sponsored link? I don't know of any law that says this is illegal.
Rating: 5 Votes
Avatar
14 months ago

This bit paints a picture.


Yes, it is funny that they planned to use Apple's launch of the Apple Watch and its associated iWatch nickname to create confusion and launch an iWatch smart watch of their own. Yet they complain about supposed confusion in separate and unrelated markets.
Rating: 4 Votes
Avatar
14 months ago
Why is he using Apple instead of Google? Google is solely responsible for this, not Apple. Apple is paying to show their ads when certain words are used, it is up to Google for showing these ads.

Over the years, many companies, including American Airlines, Geico, and Rosetta Stone, have tried to take on Google or its advertisers in court over trademark issues, often unsuccessfully. Google’s policy for its ad service says it evaluates trademark complaints on a case-by-case basis and “may enforce certain restrictions.” Giacomo Bonelli, a lawyer for Probendi, says, “Apple never replied to our requests and objections, while Google said they are not responsible for links.” Apple and Google declined to comment on the case.


I'm surprised Google is saying they're not responsible for links, it's not a link, it's a sponsored ad spot, they are responsible.

In addition, Probendi has no case here. It's a smart ad based on a keyword, they do not own the word entirely, they only own it for health related purposes.
Rating: 4 Votes
Avatar
14 months ago

Yep, because I can release a trike called a BMW, (which is not a car), and they wouldn’t get upset about it.


Actually BMW manufacturers motorcycles. It's very similar, so yes, they would get upset about it. Now if your BMW made waffles, then shoot for the stars buddy.
Rating: 4 Votes
Avatar
14 months ago

Apple Watch = a watch.

iWatch = health and safety communication software.

Where is the scope for consumer confusion with their products / services, exactly?

Move along, Probendi.


That's not how trademarks work. There is a catalogue of trademark categories called the Nice classification and products are assigned to one or more categories upon registration. If the pursuer claims that Apple is using their trademark for a product that would fall under that category then they are entitled to protect their trademark. The Apple Watch could fall under health and safety communication software too, since the Nice classification isn't that precise, particularly with modern technology. Apple registered its Apple Watch trademark under a broad list of categories as well, including health-related technology and services. In this case the classification may indeed overlap, giving the pursuer a cause of action. A trademark holder can prevent anyone else from using that trademark in that category and they can accordingly oppose the use of that trademark as well.

So Coca-Cola is not allowed to use 'Pepsi' as a sponsored link? I don't know of any law that says this is illegal.


There is ample precedent. If you hold a trademark for a product then you don't want others, especially competitors, to use that trademark against you. Think of free-riding, dilution and so forth. When a user searches for "pepsi" but is instead directed to Coca-Cola then the latter infringes upon Pepsi's right to control its own trademarks. Keyword ads are merely a novel case of trademark infringement, but not without precedent.
Rating: 3 Votes
Avatar
14 months ago

How is Google supposed to know whether the user is searching for a watch or a health and safety communications software if all the user types in is "iwatch"?

They can track which result a user clicks on after they search for the term... and build statistics.
This is Google's specialty, tracking people and what they read and do.
Rating: 3 Votes
[ Read All Comments ]