Most businesses use search engine marketing strategies to grow their brands and generate more traffic and leads. One way to quickly get customers' attention that might be interested in your goods and services is with a targeted Google AdWords campaign. So it makes sense that you may consider using a competitor’s trade mark as a keyword in your campaign. You want to target and attract similar customers.
Google allows you to bid on keywords or phrases similar to what you want to advertise. When this is a trademarked name, would it be considered trade mark infringement?
Using a Third Party’s Trade Mark as a Keyword
In principle, using a third party’s registered trade mark as a keyword in your Google AdWords campaign is not trade mark infringement. Here’s why.
Trade mark infringement occurs when you use another party’s registered trade mark in relation to identical or similar goods and/or services for which their trade mark is registered. Critically, the trade mark has to be “used as a trade mark” for infringement to occur, meaning it must be used as a sign to distinguish your goods or services from the goods or services of others.
Importantly, keywords are invisible to the customer that is searching. Our Courts have accordingly found that this cannot be “use as a trade mark” of the kind required to establish trade mark infringement. Instead, our Courts have found, this is the “use of a trade mark to identify internet users who may have an interest in purchasing your goods or services”. This cannot be trade mark infringement.
Could You Be in Breach of Australian Consumer Law?
Another argument that has been made to our Courts (unsuccessfully) is that using a competitor’s trade mark as a keyword to trigger sponsored link advertising for your own business is false or misleading conduct in breach of the Australian Consumer Law (ACL), which is contained in Sch 2 to the Competition and Consumer Act 2010 (Cth).
The argument used is that using a competitor’s trade mark as a Google Ad keyword is likely to mislead consumers into thinking your goods or service are those of the competitors or that they have the competitor’s sponsorship or approval.
Again, this argument was rejected by our Courts. As keywords are not visible, and as the ordinary customer is unlikely to know what a keyword is, let alone how it interacts with the search process, the Courts did not regard the practice of bidding on competitor’s trade marks made representations of any kind to customers, let alone misleading ones.
What is Google’s Stand on Trade Marks & Keywords?
Google requires that advertisers don’t infringe third-party trademarks. However, Google recognises that third parties may properly use trademarks in certain situations and states expressly that they don’t investigate or restrict trademarks as keywords.
While it may be frustrating for businesses who have invested considerable resources in building up a brand to have competitors leveraging that brand to compete and entice customers away, it is not illegal. This is one of many circumstances in which advertisers’ use of trade marks, even those owned by a competitor, is legal and legitimate.
How We Can Help You
Your trade mark protects your business’ unique brand and identity and allows you to build up a reputation and establish customer loyalty. We’ll help you protect your brand and business. Contact Level Up Legal to discuss how to take the next step with us.
