Google has announced that from 28 July 2014, it will change its policy in Australia and New Zealand as it applies to the use of trade marked terms in online advertisements by resellers of goods, sellers who offer compatible components or parts, and advertisers who provide information about goods and services.

In line with Google’s policy for the United States of America, United Kingdom, Canada and Ireland, Google’s policy will provide that advertisers in Australia may use a trade mark in the text of such advertisements, but only if the advertisement complies with the requirements in Google’s policy.

In the context of online advertising, a trade mark can be misused or misappropriated in a number of ways.  For example:

  • a competitor may use a protected trade mark in the body of an online advertisement (including, for example, words and logos that are protected by registration of a trade mark, or through use)
  • a cyber-squatter may register domain names that incorporate a trade mark at around the time a company files for trade mark protection or launches a new brand
  • a competitor may purchase a trade mark as a key word that generates a sponsored link to the competitor’s advertisement in response to an online search for the term.

Depending upon the circumstances, including the nature of the use and the extent to which the trade mark is protected, an aggrieved party may be able to apply to the Court for relief for trade mark infringement, passing off and/or misleading and deceptive conduct in breach of the Competition and Consumer Act.

In the case of domain name disputes about generic top level domains (such as .com, .org, and .net), a complaint can be filed with the World Intellectual Property Organization (WIPO) in accordance with its Uniform Domain Name Dispute Resolution Policy (UDRP). A similar policy (auDRP) applies with respect to .au domains. Domain name complaints can also be made on other bases, for example that a person or entity is not eligible to be the registrant of a domain name, or that the domain name was registered for the sole purpose of selling it.

In the case of complaints relating to AdWords advertisements, Google can investigate upon request and, as a result of processing such a complaint, may restrict the use of a trade mark within the text of an advertisement. Different considerations apply where the competitor has only used the trade mark as a key word, however taking action directly against the advertiser may still be possible if the use is confusing.