Gone are the days where customers and clients rely on the Yellow Pages to find businesses to provide them with goods and services. These days, everybody just “Googles it”. If you do not have a presence online, you are likely missing out on potential leads, an inexpensive way to advertise your business along with acquiring goodwill and cementing your reputation.

Most businesses recognise this, and if you are savvy your online marketing strategy will consist of the following:

  • A clean and easy to navigate website; 
  • Understanding how to boost your organic traffic; and 
  • A targeted Google AdWords campaign. 

Google AdWords positions your paid ad on the first page when potential customers type in relevant keywords. 

Some digital marketing strategists recommend using a competitor’s name, brand and trade mark as part of a business’ Google AdWords campaign. Google’s AdWords Policy permits this conduct, and it is unlikely that the search engine giant will entertain complaints from trade mark owners. Below, we set out the exceptions

Trade Mark Infringement

Section 120 of the Trade Marks Act 1995 (the Act) sets out that infringement of a registered trade mark takes place where a person uses a sign that is deceptively similar or substantially identical to the registered trade mark. It must be used in relation to the same or similar goods or services.

If you are using keywords that consist of a competitor’s registered trade mark or something that is deceptively similar to a competitor’s registered trade mark, you may receive a letter of demand from your competitor who owns the mark.

If you do, remember that a key element of trade mark infringement is that the allegedly infringing mark must be “used as a trade mark”. If the allegedly infringing mark is not used as a trade mark, the use of the mark will not constitute infringement.

A sign will be considered to have been used as a trade mark if it is used, in the course of trade, as a ‘badge of origin’ to illustrate a connection between the person who applies the mark to the goods and the goods. Section 17 of the Act expresses this concept in its definition of a trade mark.

Key Takeaways

Using a business competitor’s trade mark as a bidding keyword in your Google’s Adwords Campaign does not constitute trade mark use unless the same keywords are used or shown in the advertiser’s paid advertisement (also called sponsored link). Furthermore, use of a competitor’s mark as a keyword in Google’s AdWords Program is unlikely to cause misleading or deceptive conduct or passing off unless the mark can also be seen either in the advertiser’s paid advertisement or on its website. This is because keywords in Google Adwords campaign only assists a user in finding relevant search results. It does not show up in the search result as a “badge of origin”. Mere use of a registered trade mark as a keyword in Google’s Adwords Program does not constitute trade mark infringement.

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Questions about protecting your brand online? Get in touch with our IP lawyers on 1300 544 755.

Raya Barcelon

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