Ever done a web search for your business and found a competitor ad further up the list than your site?

Optimising your visibility on the results pages of search engines such as Google, has become a core component of online marketing strategy. But how can brand owners protect themselves when competitors are using their trade marks, business names and domain names as AdWords or keywords to increase their ranking on search engines such as Google?

Equally, what checks and balances can advertisers using the Google AdWords program put in place to avoid allegations of misleading and deceptive conduct and trade mark infringement?

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My trade mark is being used by a competitor in a Google Adwords program

Before 23 April 2013, if your trade mark was being used as a Google Adword in Australia, the first avenue was to file a Google Adword Complaint. However since 23 April 2013, Google’s Trademark Adwords policy has been updated so that Google no longer restricts advertisers purchasing and using trade marks as keywords in Google Ads (previously known as sponsored links), provided those trade marks do not appear in the text of the resulting Google Ad.

Despite this policy change, trade mark owners still have the following options if the ad includes unauthorised use of the trade mark in the text of the ad:

  • complain to Google about unauthorised use of their trade mark in ad text. Google will restrict this use;
  • seek recourse against the advertiser for breach of the Australian Consumer Law 2010 (Cth),for example, if the advertiser's use of the trade mark is likely to mislead or deceive the public into believing that when they click on the Ad they will be taken to the trade mark owner's website, or that the advertiser is somehow associated with the trade mark owner or its goods and/or services; and
  • seek recourse against the advertiser for trade mark infringement under the Trade Marks Act 1995 (Cth).

As there are significant consequences for making unsubstantiated allegations in relation to trade mark infringement and breaches of the Australian Consumer Law, you should consult your legal adviser before making allegations against an advertiser.

Australian Courts are yet to consider whether the mere bidding and purchasing of a competitor's trade mark, in circumstances where the trade mark is not visible in the resulting Google Ad, constitutes misleading or deceptive conduct or trade mark infringement.

What do consumers understand?

Based on recent High Court of Australia authority, it appears that the public understands the difference between Google Ads (formerly sponsored links) and organic search results. As such, consumers appreciate that the Google Ads that appear at the top or to the right hand side of organic search results are just that, paid advertisements and that the organic search results are those of the trade mark owner.

What if I have a Google Adwords program?

Based on the current law in Australia, advertisers using the Google Adwords program should not use a competitor’s trade mark, trading, product or domain name anywhere in the text of a Google Ad including, as the headline, in the text of the ad or in the link to your website (URL) when the ad text links to a website which does not contain any information about the competitor or its products/services.

Doing so may constitute trade mark infringement, and it is likely to be in breach of the Australian Consumer Law 2010 (Cth) on the basis that the conduct is misleading or deceptive and/or constitutes a false or misleading representation that the advertiser (and/or its goods and services) has an association or affiliation with the competitor, when that is not the case.

It is not clear whether the mere bidding and purchase of competitor’s trade marks as invisible Google Adwords (that is, where those Adwords do not appear in the Ad text) may breach Australian consumer protection or trade mark laws.

Whilst Google is taking a more relaxed approach to its Adwords policy, trade marks owners can still take advantage of other avenues for recourse against advertisers. Advertisers also have more guidance now on what they can and cannot do in their Google Adwords programs.