Google Australia updated its trademark policy for advertisers. What will this mean for those whose trademarks are online?

Following changes to Google Australia’s trademark policy, it is now quite common for competing businesses to utilise their competitors oft-trademarked business names as part of a Google AdWords campaign. The idea is to attract the potential clients from their competitors and bring them to their own site. Is this legal? Well, despite complaints from some trademark owners of other businesses benefiting from their exclusive rights, Google has amended its keywords policy to allow the bidding on competitors’ trademarks as keywords. This will mean all trademark owners will have to remain watchful in preventing other businesses from using their marks in any manner that goes beyond a Google search result.

For example, Pepsi Australia might want to bid on “Coca Cola” as a keyword. They can do this, however, they can’t compare themselves to Coca Cola in their advertisement. For example: “Pepsi is better than Coca Cola” would probably breach their trademark.

The effect of this policy change is that the use of certain keywords no longer breaches Google Australia’s trademark policy, allowing competitors to use these trademarks during their AdWords campaigns. This new development in the law follows a High Court decision in Google Inc v Australian Competition and Consumer Commission (2013) 294 ALR 404 where Google successfully argued against the misleading and deceptive conduct charges relating to its sponsored adds.

What were the changes to the policy?

Google displays two types of results: organic and sponsored. When a search term is entered into the search tab, Google will show at the top of the page in its results links to businesses running AdWords campaigns for the search term as a ‘Related Ad’ or ‘Sponsored Link’.

Up until these changes, advertisements that were directed at consumers could not use another’s trademark in their keywords campaigns. Now, however, those searching competitors’ trademarks will also be able to see the sponsored links and paid advertisements to the websites of the trademark owners’ direct competitors.

Despite this more lenient policy that allows the use of other businesses’ trademarks as keywords, Google will still pursue any uses of another business’ trademark in the actual text of the sponsored link, provided someone complains about this in the first place. Controversially, however, businesses are still allowed to use a competitor’s trademark in their ‘display URL’, since this doesn’t count as ‘text’. Keep in mind that a display URL is not always the same as the domain of the homepage.

Google has said that it will not prevent advertisers from using trademarks in their display URL because it isn’t considered a ‘use’ of the trademark.

How are trademark owners affected?

While Google is saying that this change will lead to an improved user experience, the owners of trademarks should keep a close eye on how their trademarks are used by competing businesses. The changes to Google’s trademark policy won’t make it impossible to show infringement for the use of a trademark as a keyword, but it will certainly be more difficult. If, in the sponsored link, the keyword is not shown to the consumer, it will not necessarily constitute an infringing use of the trademark.

How are advertisers impacted?

The decision handed down by the High Court tells us that, even today, advertisers will have to take responsibility for what appears in their advertisements, both on and offline.

An advertisers use of someone else’s trademark in a sponsored ad still potentially infringes the ACL. To escape any liability, and play it safe with respect to the intellectual property of other businesses, it’s better to avoid using their trademarks altogether, despite what you might think you can get away with.

Conclusion

Trademarks are important as tools used to protect the intellectual property of a business – its name, logo, etc. They protect the goodwill and reputation of a company and, for this reason, are very valuable. Don’t take the risk of breaching another business’ trademark rights. It could cost you a fortune. Contact LegalVision’s team of lawyers to speak with one of our trademark specialists.

Lachlan McKnight

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