On September 14, 2010, Google is set to change its controversial AdWords policy for Canada, the United Kingdom, Ireland and most of the rest of Europe.1 In recent years, Google has systematically altered its AdWords trademark policy — both geographically and in substance — with a tendency toward expanding the circumstances in which an online advertiser is allowed to utilize an unrelated party’s trademark. The upcoming changes follow this trend: For the first time, advertisers throughout most of Europe will be able to utilize trademarks — at least in a limited fashion — for online advertising through Google.2
Google’s AdWords allows an advertiser to “tie” its online advertisements to a keyword, such that when a user “Googles” the keyword, the “tied” advertisement is displayed in a “Sponsored Links” section of the results page. Not surprisingly, online advertisers frequently seek to “tie” their advertisements to keywords that correspond to trademarks corresponding to products other than those of the company purchasing the keyword-triggered ad. Online advertisers may also attempt to include the keyword within the text of their online advertisement. An advertisement buyer may wish to buy a keyword trademark of a third party because the advertiser is, for instance, a vendor of that third party’s products (e.g., an online shoe store buying “Nike” as a keyword to drive traffic to its Nike shoe offerings), or, in other instances, a competitor of the third party (e.g., adidas hypothetically buying “Nike” as a keyword to suggest adidas brand shoes as a possible alternative for a customer who had initially been considering buying Nike shoes).
To a trademark holder concerned with policing its brand, both uses might be of concern, and multiple suits, in multiple jurisdictions, have been filed against Google as a result. Google’s AdWords policy has developed in response to this litigation — sometimes with clear judicial guidance, but oftentimes without it.
Europe (excluding the UK and Ireland)3
The upcoming policy change for most of Europe is one instance in which Google received (somewhat) clear judicial guidance. In particular, as we reported earlier this year, the Court of Justice (the highest judicial authority for the European Union), in a March 2010 opinion, sided with Google, at least in a limited sense, as to Google’s right to allow advertisers to tie advertisements to keywords corresponding to trademarks.4 Google has incorporated this ruling into its new AdWords policy for (most of) Europe, which can be summarized as follows:
- Advertisers can “tie” their advertisements to keywords corresponding to trademarks;
- Advertisers cannot use the keywords within the text of their advertisements; and
- Trademark owners can request that Google remove an ad which meets the first two prongs, but Google will only do so if the ad text creates a likelihood of confusion.5
Other than allowing advertisers to use trademarks as keywords — which is a large shift — the rest of the policy is fairly similar to the current policy. Presently, a trademark owner must file a complaint with Google before any action will be taken — even on an ad that uses a trademark within its text.6 Under the new policy, a trademark holder must still file a complaint; however, Google will no longer automatically remove ads that use trademarks as keywords. Instead, action will only be taken if the trademark is used in the ad text itself or the ad text creates a likelihood of confusion — a new prong in the AdWords policy.7
Canada, the UK and Ireland
The current policy in Canada, the UK and Ireland is similar to the new policy discussed above. Namely, advertisers can “tie” advertisements to keywords corresponding to another’s mark, but trademark holders can also — by complaining to Google — generally prevent the mark from appearing in ad text.8 The new policy, however, severely limits a trademark holder’s opportunity to halt the use of trademarks within ad text, essentially aligning the AdWords policy in Canada, the UK and Ireland with the U.S. version of the AdWords policy, Google’s least restrictive for advertisers. The new policy can be summarized as follows:
- Advertisers can select trademarks as keywords, and
- Advertisers generally have an unequivocal right to use the keyword within ad text within the following categories:
- the keyword is used in a descriptive manner, or
- the keyword is used a nominative manner, as in referring to trademarked goods for resale, for sale of replacement parts, or for informational purposes.9
Clearly, a trademark holder can no longer have an ad removed by simply establishing that its mark appears in the ad text. Instead, for an ad to be removed under the new policy, the use of the trademark must fall outside of the excepted categories listed above, which are in effect descriptive and nominative “fair use” as defined by US jurisprudence, curiously now being applied to international jurisdictions.
Nevertheless, Google’s policy does indicate a willingness to remove those ads that should be most troubling to an advertiser, stating that “the primary purpose of the advertiser’s site must be to provide non-competitive and informative details about the goods and services corresponding to the trademark term[, and]…the advertiser may not sell or facilitate the sale of the goods or services of a competitor of the trademark owner.”10
It should be stated that Google’s AdWords policy does not — and could not — restrict when a trademark holder can sue an online advertiser directly; indeed, direct suits seem to be Google’s preference. Rather, Google’s policy changes only affect how Google will respond to a complaint from a trademark holder. For a trademark holder concerned about online advertising, the new Google policies, like the current ones, require vigilance. Although the policy changes in the respective jurisdictions discussed herein reduce the likelihood that a complaint will result in the removal of an online ad, the best course of action for a trademark holder is still to be vigilant in protecting its mark through a systematic and continual policing policy.