Can you use someone’s trademark in a Google AdWords campaign?

Can you use someone’s trademark in a Google AdWords campaign?

On February 28, 2017, Posted by , In Trademarks, With No Comments

Can you use someone’s trademark in a Google AdWords campaign?

Many businesses now use Google to market and promote their goods and services. From giving attention to organic search results via Search Engine Optimisation (SEO) to paying for AdWords campaigns.

Have you ever typed your trademark name into Google and your website address is displayed as an organic result?

Then you notice that your competitor’s website is showing up as a Google AdWords advertisement above your organic search. From what you can tell, they have used your trademark as their keyword.

How did this happen? More importantly, are they contravening Australian consumer and trademark laws?

A 2016 Federal Court of Australia case ruled that use of a trademark within AdWords keywords usually does not constitute trademark infringement. But first, let us explore what Google says about this.

Google’s approach to using your competitors name and trademark in advertisements

According to Google, a trademark owner can submit a complaint to them about the use of their trademark in AdWords text ads,

“We take allegations of trademark infringement very seriously and, as a courtesy, we investigate valid complaints raised by trademark owners or their authorised agents. However, Google is not in a position to mediate third-party disputes, and we encourage trademark owners to resolve their disputes directly with advertisers.”

Google provides Google AdWords Trademark Trouble shooter advice here.

 Google AdWords trademark implications

VEDA Advantage Limited V Malouf Group Enterprises Pty Limited (2016) FCA 355

This 2016 decision by the Federal Court of Australia gives a useful framework to understand whether or not you can bid on your competitor’s trademark in Google AdWords.

VEDA Advantage Limited is the largest credit rating provider in Australia. It brought the case against Malouf Group Enterprises claiming that their intellectual property rights had been infringed by Malouf because they were:

Displaying the VEDA trademark in Malouf Group Enterprises Google Ads.
Bidding on VEDA’s trademarked keywords in Google AdWords.

When users searched for certain keywords, the Malouf Group used the Google AdWords service to display a sponsored link. Using around 86 keywords in their Google AdWords campaigns, some of the keywords included VEDA Advantage’s trademarks.

The Federal Court of Australia ruled that this did not constitute trademark infringement, because in this context the keywords were not used ‘as a trademark’. (i.e. “use as a trademark” means using that word or sign in order to distinguish certain goods/services from the goods/services of other traders.)

Importantly in this case, the Google AdWords keywords Malouf Group chose were not visible to users. These keywords were also not used with the intent to imply a connection to VEDA Advantage.

The Federal Court of Australia stated that:

“[The defendant] was not using the keywords as a sign to distinguish its services from the services of others. Rather, it has used them to identify Internet users who may have an interest in using its services.”

The Malouf Group also used the word ‘VEDA’ in headlines of the Google AdWords advertisements but the Federal Court of Australia held that most of the headlines they used were only descriptive of the service offerings. These descriptions, such as ‘Clean your VEDA file’, ‘Fix your VEDA history’ did not infringe Veda Advantage’s trademark rights because they were not used as a trademark.

A word or sign may not be considered use as a trademark if the use:

  • Explains the nature or quality of the goods or services;
  • Describes some characteristic of the goods or services;
  • Describes the ingredients of the goods; or
  • Shows how the goods or services work;

There were still legal problems for the Malouf Group with headlines such as ‘The VEDA report centre’. The Federal Court of Australia found the word VEDA was used to falsely represent Malouf Group as being connecting with VEDA. In this instance, the headlines were not descriptive and constituted misleading and deceptive conduct under Australian Consumer Law.

What to do if a competitor is using your trademark in Google AdWords campaigns and advertising

If your competitor is using your trademark as their keyword, in a Google AdWords campaign and advertisement, it is wise to seek trademark law advice.

The current Google AdWords policy indicates they will not investigate or restrict the use of third party trademarks in keywords. They will also allow the use of a competitor’s trademark in an advertisement’s display URL.

Quick Off the Mark® suggests if a third party has used your trademark in the text of a Google advertisement, you should still make a complaint to Google. It is important to note that Google allows the use of others’ trademarks in the text of Google advertisements, which are placed by sellers of replacement/compatible products, resellers, and informational websites.

4 tips remember about using someone else’s trademark in your Google AdWords campaign

You may be in breach of Australian Consumer Law and be guilty of trademark infringement if you use a competitor’s trademark in Google AdWords headings or text that improperly imply a commercial relationship between two entities or where it is likely consumers will be confused as to the origin of the product or service, and assume that the product or service is originating from the trademark owner

1.    At the moment you can legally bid and use your competitor’s trademark in your Google AdWords keywords.

When using a competitor’s trademark in the heading or text of a Google AdWords campaign, you must ensure that such use is descriptive rather than creating the representation that your business is linked with that of the trademark owner. Merely using a competitor’s trademark as a Google AdWords keyword will not usually be enough to infringe a trademark.

2.    Your Google AdWords campaign and advertisements may still contravene Australian Consumer and trademark laws.

Breaches of these laws will depend on how you use your competitor’s trademark and name in your Google AdWords campaigns.

3.    If you use Google AdWords to market your goods and services internationally courts in many foreign jurisdictions have considered the legal issues arising from Google AdWords.

The outcomes have been different in each jurisdiction. If you are marketing your goods or services internationally using Google AdWords, you should seek legal advice to ensure that you are complying with the laws of each jurisdiction.

4.    To ensure you are not breaking consumer and trademark laws with your Google AdWords campaigns and advertisements, we suggest you seek advice.

Call Quick Off the Mark® on 1300 35 25 75.

DISCLAIMER:

The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.

Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.

In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.

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