What is all the fuss about?

Picture this: you type your brand name into Google. As expected, your brand’s website is returned as an “organic” result. However, a competitor’s brand is returned as a “sponsored” result (now known as a Google Ad), at the top or to the right hand side of the results page. Considering that you have probably invested time and money into protecting your brand, the appearance of your competitor’s brand front and centre on the results page may understandably raise your ire – even if it is identified as a paid advertisement.

How can this be prevented, you ask? Well, in light of Google’s AdWords Trademark Policy for Australia – most recently updated in July this year – you might be hard pressed to, unless your trade mark is used within the text of the advertisement.

What you need to know

Under its policy:

  • Google will not investigate or restrict the use of third party trade marks in keywords, even if it receives a complaint from the trade mark owner.
  • Google will also permit the use of a competitor’s trade mark in an ad’s display URL, as this is not considered “use” of a trade mark.
  • Google will investigate complaints regarding the use of third party trade marks in the text of Google Ads, and may restrict their use. The most recent updates provide an exception to this restriction, allowing for the use of others’ trade marks in the text of Google Ads placed by resellers, sellers of replacement/compatible products, and informational sites.

The backstory

Google significantly relaxed its AdWords Trademark Policy in April 2013 in the wake of the High Court of Australia’s decision in Google v ACCC, where previously the policy for Australia had allowed brand owners some measure of protection. In Google v ACCC the High Court found that Google had not engaged in misleading and deceptive conduct by publishing or displaying “sponsored links” containing misleading or deceptive content at the head of its internet search results (see here for detail). After this decision, Google removed protections for brand owners that had previously been in place prohibiting advertisers from using others’ trade marks and business names as keywords. Google also removed its complaints procedure relating to misuse of brand owners’ trade marks in this manner.

At this point, Google still prohibited the use of others’ brand indicia in the body of the advertisements targeted at Australian consumers without the authorisation of the brand owner – unless the use was descriptive or for unrelated goods or services.

Most recent changes

As of July this year, Google now permits advertisers targeting Australia and New Zealand to use others’ trade marks in the body of their advertisements if they are reselling, advertising replacement/compatible products to, or providing information about, the goods or services relating to the trade mark. This brings the policy into line with the United States, UK, Canada and Ireland.

Google’s Reseller and informational site policy stipulates that the “landing page” for such ads must:

  1. have the relevant trademarked product or services as its primary focus; and
  2. clearly provide a way to purchase, or display commercial information about, the product or services.

In the case of informational sites, the landing page must have the primary purpose of providing informative details about the relevant goods or services.

Google will not allow ads that use the trade marked term in a competitive way.

What can brand owners do?

For now, the best available approach for brand owners is to remain vigilant across third party uses of their brands online.

If your trade mark has been used in the text of a competitor’s advertisement, you can:

  • Complain to Google. Google will investigate and may restrict the use of the trade mark.
  • Seek legal advice. You may have remedies in an action for trade mark infringement, passing off or misleading and deceptive conduct under the Australian Consumer Law.

The issue of whether the purchase of keywords relating to a rival’s trade mark from the Google AdWords service can amount to trade mark infringement has been litigated in many countries around the world. In the UK, for example, it was held last year that Marks and Spencer infringed Interflora’s trade mark by purchasing AdWords for “interflora.” Read blog post.

Earlier this year the High Court of New Zealand handed down a decision that the use of a competitor’s trade mark as a keyword in an AdWords campaign did not amount to trade mark infringement (see Intercity Group (NZ) Limited v Nakedbus NZ Limited [2014] NZHC 124). The court did find, however, that use of the trade mark in the ad’s text constituted trade mark infringement, passing off and misleading and deceptive conduct.

In Australia this issue is yet to be specifically litigated. Watch this space!