Australia's Google AdWords Trademark Policy (Policy) will soon be updated so that it falls into line with the rest of the world in relation to its Reseller and Information Site criteria. This will likely mean additional acceptable use under the Policy in respect of third party trade marks included in Google Ad text.
The Policy was previously updated after the Australian High Court case of Google Inc v Australian Competition and Consumer Commission (2013) HCA 1 (Google Case). The Google Case resulted in Google amending the Policy so that it mirrored the position in other parts of the world by allowing advertisers to purchase and use trade marks as keywords in Google Ads.
Currently, the Policy states that: “Google will investigate and may restrict the use of a trademark within ad text. Ads using restricted trademarks in their ad text may not be allowed to run. This policy applies worldwide.”
Outside Google's Policy, as we have highlighted in our previous focus papers Australia's Evolving Legal Position on use of Other Trader's Brands in Online Advertising and New Zealand High Court Weighs in on Google AdWords - Brand Owners Continue to Navigate Acceptable Online Brand Use, the extent of acceptable use of a third party's trade mark in online ad text has been tested before the Courts, including in Australia. The result of those cases to date indicates that the act of bidding on and/or using a third party's trade mark behind the scene, but not using the third party trade mark in a manner where it is displayed in the online ad text, will unlikely contravene Google's Policy or the traditional legal principles, for example trade mark infringement under the Trade Marks Act (1995) (Cth), misleading and deceptive conduct under Australian Consumer Law or common law passing off.
In relation to use of a third party trade mark within the online ad text itself, currently the Policy provides some basis for complaint to Google. The Court's approach to such use, again under traditional legal principles, has led to mixed results depending heavily on the characterisation of the use. For example, in the Google Case, the traders who used third party trade marks within their online ad text were found to be guilty of misleading and deceptive conduct (although Google was not). In other cases, where use of a third party trade mark has been found to be "descriptive" then trade mark owners have failed to prevent other traders using the trade marked terms in such online ad text (for example Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd  FCA 900;  FCAFC 75).
Further Changes to be implemented on 28 July 2014
Google has recently announced that it will be making further updates to its Policy in Australia so that it will incorporate the "Reseller and Information Site Policy" which is currently in place in the United States, United Kingdom, Canada, and Ireland. These changes will take effect on 28 July 2014 and will have the effect of expanding the circumstances in which traders can use a third party trade mark in its Google Ad text, at least insofar as Google and its own Policy is concerned.
From 28 July 2014, advertisers in Australia may use another trader's trade mark in their Google Ad text if they are a reseller of, offer compatible components or parts for, or provide information about, the goods and services related to the trade marked term on a landing page.
There are exceptions to the Reseller and Informational Site Policy, namely:
- Ads that do not lead to a landing page that clearly facilitates the sale of the goods and services that correspond to the trade mark;
- Ads using the trade marked term in a competitive way by using, for example, ads that contain a landing page that promotes a competitors goods or services; and
- Ads that lead to a landing page that do not contain substantive information about the goods or services that correspond to the trade mark.
Full details of the Reseller and Informational Policy can be found here: https://support.google.com/adwordspolicy/answer/6118?hl=en&ref_topic=1346940
It is important for brand owners to be up to date with what terms they can and cannot use in their Google Ad text and any online advertising and the context and effect of the current Policy and the views taken by the Australian Courts in these matters (which may be different to the views of Google and the matters adopted in their own Policy).