From 28 July 2014, Google will permit Australian advertisers to use a trade mark in the text of an advertisement, provided they meet certain conditions. Partner, Tim O’Callaghan and Associate, Megan Comerford, discuss what these changes mean for advertisers.
The conditions advertisers are subject to as a result of the change in the policy are that:
- they are a reseller of goods and services related to the trade mark, or
- they offer compatible components or parts for, goods and services related to the trade mark, or
- they provide information about the goods and services related to the trade mark.
To fall within the policy as a reseller, the product or services must be the primary focus of and clearly available for purchase from the ad’s landing page.
Informational sites qualify when the primary purpose of the ad’s landing page is to provide informative details about the goods or services corresponding to the trade mark.
Advertisements which use trade marks of one business to promote the goods or services of a competitor of the trade mark owner will not be permitted, however an advertisement may use a trade mark in its text if it is used “descriptively in its ordinary meaning”.
Advertisers can still use a trade mark within the text of an advertisement if they are “authorised” to do so, even if they don’t otherwise comply with the reseller and informational site policy. To be authorised, the trade mark owner must submit the necessary paperwork allowing an advertiser to use a particular trade mark.
This policy already applies to resellers and informational sites in the US, UK, Canada and Ireland. These changes follow the substantial update to the application of Google’s trade mark policy in Australia following the outcome of Google Inc v ACCC (2013) HCA 1 (read our previous publication on this issue here).
How is this different?
These changes expand the circumstances in which traders can use someone else’s trade mark in the text of a Google advertisement. Before 28 July 2014, authorisation by the trade mark owner was required before a trade mark could be used in the text of a Google ad in Australia or New Zealand, even if it complied with the reseller and informational site policy and was used in the US, the UK, Ireland or Canada. Now, in Australia, as long as Google is satisfied that an advertisement complies with the reseller policy, it will be allowed to run, even without authorisation from the trade mark owner.
What if the reseller is unauthorised?
If the advertisement meets the criteria for Google’s policy, it will be allowed to run, regardless of whether or not the trade mark owner has authorised the use of the trade mark in the advertisement. Therefore the implementation of this policy does not assist trade mark owners who wish to crack down on unauthorised resellers. Of course, there are other options to combat this, including
if the unauthorised reseller is selling non- genuine imitation goods, or is holding itself out to be authorised.
What action should be taken?
If an advertisement uses your trade mark, and does not comply with this policy, it can be reported using the online complaint form available from the Google help page. We can assist with the filing and pursuance of complaints to Google. It is also important for brand owners to stay up to date with what terms they are allowed to use in their own Google ads.
Because the implementation of this policy in Australia and New Zealand expands the rights of third parties to use your trade marks, you should watch the use of your trade marks by other parties on Google even more closely than before. We can assist you to monitor Google advertisements. We can also monitor common Google searches using your trade marks to ensure that no advertisements have been allowed to run that do not comply with the reseller and informational site policy.
The existing rights of trade mark owners are not taken away by this policy change. A trade mark owner may be able to take action against potential infringers for trade mark infringement or breach of the Australian Consumer Law, depending on the circumstances.