Google AdWords is a go-to for many businesses trying to market their goods and services. The chance of your website appearing in someone’s Google search increases the more you bid on an AdWord. It is a good way of catching a customer’s eye and promoting your brand. But what happens when you type your brand name into Google and your competitor shows up in the results? Does this mean your competitor has bid on your brand name as a keyword? Moreover, is bidding on trade marked Google AdWords an infringement of your rights? These questions have been raised most recently in a dispute between Australia’s biggest online retailers, Kogan and Catch Group.

This article explains the Kogan and Catch Group case and the possible implications it has for the process of bidding on trade marked Google AdWords. It also details the current position on whether bidding on a trade marked keyword on Google AdWord constitutes an intellectual property (IP) infringement.

What Happened in Catch Group and Kogan?

In June 2018, Catch Group initiated proceedings against Kogan in the Federal Court of Australia for infringing on their “catch” trade marks. According to Catch Group, Kogan bought the domain catchmobile.com.au in January 2018. It then applied for several trade marks incorporating the word “catch”. This was apparently to drive traffic to their website through Google AdWords, away from Catch Group’s websites.

Catch Group claims that Kogan’s use of “catch” is an infringement of their trade mark rights. It also argues that Kogan is in breach of the Australian Consumer Law (ACL) because it has misled consumers by making them believe that the two businesses are related.

This is only the beginning of what might be a lengthy legal battle. Meanwhile, Kogan has agreed to stop using the catchmobile.com.au domain and any brand names, including the word “catch”.

Is Bidding on Trade Marked Google AdWords an Infringement?

A person may be liable for trade mark infringement if they are using as a trade mark a sign that is substantially identical with, or deceptively similar to, another trade mark in relation to goods and services that is registered. It is important to note the phrase, “using as a trade mark”. A person may not have infringed another’s trade mark rights if their use of the trade mark:

  • describes the characteristics of the goods and services;
  • explains the nature of the goods and service;
  • is merely laudatory.

The case Advantage Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] deals explicitly with whether bidding on a trade marked keyword on Google Adwords constitutes trade mark infringement. Here, Malouf’s use of the VEDA registered trade mark was invisible to the public through meta tags or keywords. Therefore, it was not considered trade mark use. However, sponsored link advertisements featuring the VEDA registered trade mark did constitute trade mark use because they were visible to the public.

The Kogan links have now been removed from Google. They no longer come up in searches for “catch”. However, Catch Group claims that a search for “catch connect”, “catch mobile” or “catch mobile plans” previously resulted in Google results featuring sponsored links to Kogan’s catchmobile.com.au domain. Therefore, it is possible Kogan’s conduct would constitute trade mark infringement because the “catch” trade mark would have been publicly visible.

Does Bidding on a Trade Marked Keyword on Google AdWords Constitute a Breach of the ACL?

Bidding on trade marked Google AdWords may constitute a breach of the ACL. The ACL prohibits conduct that misleads or deceives consumers. In particular, a person in trade or commerce must not make a false or misleading representation that goods and services have:

  • sponsorship;
  • approval;
  • performance characteristics;
  • accessories;
  • uses; or
  • benefits.

If Catch Group can prove that consumers were misled to believe that Kogan was associated with Catch Group, Kogan may be in breach of the ACL.

How to “Catch” Them

If a competitor uses your trade mark as a keyword in a Google AdWords campaign, you should consider the following options:

Key Takeaways

Who knows what is in store for these two e-commerce giants. We suggest following the case to see if Kogan has breached the ACL and infringed Catch Groups’ trade mark rights by bidding on a trade marked keyword on Google Adwords. If you have any questions, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Alexandra Shaw
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