Google's change of keyword policy means trade mark owners must continue to be vigilant and monitor competitors' use of their marks in Google AdWords campaigns

Google recently changed its AdWords Trademark Policy to allow advertisers to use a competitor's trade mark as a search term for their advertisements. As of 23 April 2013, Google will not investigate or restrict the use of trade mark terms in search terms (known as "keywords"), even if a trade mark complaint is received. The result of this change of policy is that keywords that were previously restricted due to a trade mark complaint are no longer restricted in China, Hong Kong, South Korea, Macau, Taiwan, Brazil, New Zealand, and Australia.

This policy shift follows the recent High Court decision in Google Inc v Australian Competition and Consumer Commission (2013) 294 ALR 404 in which Google was found not to have engaged in misleading and deceptive conduct in relation to sponsored advertisements displayed on Google. In its recent blog post about the changes, Google said that it changed the policy to ensure its Trademark Policy was consistent worldwide.

What has changed?

In response to search requests, along with organic search results, Google displays paid advertisements which are denoted as a "related ad" or "sponsored link". These "related ads" or "sponsored links" will appear in response to selected search terms chosen by the advertiser.

Until recently, an advertiser targeting consumers in Australia could not use a trade mark the subject of complaint or investigation as a keyword. However, this change in policy means that advertisers can now ensure that when a consumer uses a competitor's trade mark as a search term, the consumer sees a sponsored link to the advertiser's product as well.

While advertisers can now use a competitor's trade mark as a keyword in their search terms, there is still a policy restriction on using words subject to a trade mark complaint or investigation in the text of a sponsored link. However, advertisers can use a competitor's trade mark in the display URL as this is not considered to be part of the "text". (A display URL is the URL that appears below the sponsored link. This is not necessarily the same as the domain URL on the landing page.)

Google has stated that it will not investigate or restrict the use of a trade mark in a display URL because the presence of the trade mark within the display URL may not necessarily constitute trade mark use, particularly in the case of post-domain paths or subdomains.

What does this mean for trade mark owners?

Google claims that this change will lead to a more consistent policy and a better user experience worldwide. However, trade mark owners should remain vigilant in monitoring use of their marks by competitors as keywords for sponsored links.

Google's policy change does not mean that the use of a competitor's trade mark as a keyword in advertisements will not amount to trade mark infringement. However, it may be difficult to establish that keywords – particularly if not displayed to the consumer as part of the advertisement – are used "as a trade mark". Infringement of a registered trade mark can only occur if this can be established.

In addition, the trade mark owner might be able to take action against the advertiser if the use of the trade mark constitutes misleading and deceptive conduct under section 18 of the Australian Consumer Law.

What does this mean for advertisers?

The High Court decision in Google Inc v Australia Competition and Consumer Commission serves as a reminder that advertisers will still be held responsible for the content of their advertisements, whether online or in traditional media.

The use of a competitor's trade mark in a sponsored link may still be an infringement of the ACL by the advertiser. To avoid potentially unlawful conduct, advertisers should avoid using a competitor's trade mark in their headline, text, keywords or display URLs.