Rights holders in New Zealand and Australia have long been able to rely on Google to assist with tackling trade mark infringement online.  In a recent press release Google has announced it is removing a major part of its trade mark complaints and review process, advising it will no longer monitor or restrict the sale of AdWords in response to trademark complaints.  Moreover, affected parties will no longer be able to ask Google to remove keywords, even in the case of demonstrable infringement or deceptive and misleading conduct.  The advertising giant states that this change aligns Australasian practice with other markets abroad.

The Google AdWords programme makes available for purchase keywords, company names or brands that are used to generate advertisements or sponsored links to other websites.  Changes in Google’s internal policy effective 23 April 2013 mean that unscrupulous traders will be able to purchase unchecked any Google keywords comprising their competitor’s brands, generating advertisements for their own company every time a user enters those brands into Google. 

OPEN SEASON ON ADWORDS

The announcement follows a landmark decision in Australia last month in which the High Court of Australia unanimously held that Google did not breach Australia's Trade Practices Act 1974 trade laws by allowing companies to purchase AdWords related to competitors' names. Google’s argument that it was merely acting as a publisher was ultimately upheld. 

This means that Google will maintain its freedom to profit from activity that is potentially misleading and deceptive and a trade mark infringement.

INCREASED BRAND RISK

New Zealand and Australian trade mark owners will have to be increasingly vigilant to enforce their rights under the Trade Marks Act and at common law.  Trade mark owners can expect little help from Google going forward and must therefore look to their established intellectual property rights or to patent attorneys to monitor and enforce these online infringements. 

ACTION

In the lead-up to the 23 April 2013 policy change that trade mark owners should consult their advisors to ensure they have adequate and appropriate trade mark protection in place to enable the increased risk of infringement to be addressed.  Going forward rights holders will need to take on greater responsibility for enforcement of their rights through their Intellectual Property advisors.