Google recently announced a revision to its AdWords Trademark Policy. From 23 April 2013, keywords that were previously restricted as a result of a trade mark complaint and investigation are no longer restricted in Australia (and China, Hong Kong, Macau, Taiwan, New Zealand, South Korea and Brazil).

This means that since 23 April 2013, an advertiser can use a third party’s trade mark as a keyword in its AdWords. This amendment brings Australia in line with how the AdWords trade mark policy is applied in other parts of the world.

While this change will not prevent a trade mark owner from making a complaint about the use of their trade mark in a competitor’s AdWords, Google will not act to prevent the use of that trade mark. Prior to 23 April, the Google AdWords Trademark Policy provided that where a trade mark of a third party appeared within ad text, and a complaint was made by the trade mark owner, Google would restrict the use of the trade mark and the ad text may not have been allowed to run.

This policy change comes on the back of the recent High Court decision in Google Inc v Australian Competition and Consumer Commission [2013] HCA 1. In this case, the High Court found that Google was merely a publisher and was therefore not liable for the misleading or deceptive conduct of its advertisers in relation to sponsored links. Sponsored links are a form of advertisement created by, or at the direction of, advertisers willing to pay Google for advertising text that directs users to a web site of the advertiser's choosing.  The Court found that Google did not author the sponsored links; it merely published or displayed, without adoption or endorsement, misleading representations made by advertisers.

While not endorsing the use of third party trade marks in AdWords, the amended Google Policy states that 'Google is not in a position to make recommendations regarding the use of terms corresponding to trade marks. If you have any further questions, we encourage you to contact your legal counsel and consult AdWords Terms and Conditions.'

Advertisers who are planning on using a third party's trade marks should be aware that while Google may not be liable for misleading or deceptive conduct, depending upon the circumstances, the advertiser may be.

What does this mean for you?

From 23 April 2013 an advertiser can use a third party’s trade mark as a keyword in its AdWords.

If you had a restriction in place as a result of a successful complaint to Google about the use of your registered trade mark in a third party's AdWords, this restriction has ceased to apply.

This policy change is likely to increase the difficulty and costs for companies seeking to protect their trade marks from (mis)use by competitors in Google AdWords.

Businesses should revisit their AdWords portfolios and strategies in light of this important change.