Using trade marked terms as Google AdWords

With the increasing ubiquity of Google and consequently its advertising platform, AdWords, it is inevitable that disputes are arising between trade mark owners and other businesses using those trade marks as keyword search terms.

European court decision

In a recent European court decision, it was found that the use of a registered trade mark as a keyword search term could infringe a trade mark owner’s rights if the use of the term created confusion about the origin of the goods or services advertised or gave an impression that the user of the term and the trade mark owner were in a business relationship. In this case, the seller of used mobile buildings was using the trade mark PORTAKABIN, which was owned by the original manufacturer of the good. If a user entered the term PORTAKABIN into Google, the advertising link would lead users to the seller’s website where used goods were legally for sale.

The European court concluded that a reseller of goods under another business’s trade mark may have a legitimate use for such trade mark and would have difficulty marketing to potential customers without using the trade mark. However the use of that mark by the reseller must not create an impression in a potential customer’s mind that the two businesses are linked or in a way which could be detrimental to the reputation of the trade mark.

Earlier European court decision

An earlier European court decision involving Louis Vuitton and Google also found that the user of a trade mark as a keyword search term must not create an impression of a link between the trade mark owner and the advertiser and must not be so vague as to confuse the potential customer as to the origin of the goods.

Australian position

In Australia, Google offers Australian trade mark owners a complaint mechanism whereby a complaint can be lodged and investigated by Google if a third party is using a registered trade mark as a keyword search term of in an advertisement. If Google finds the term is being used, it will require the third party to remove the term.

Outside of Google AdWords, any advertisement that uses a trade mark that the advertiser does not own, should make clear that the advertiser is not connected with the trade mark owner and is supplying the goods or services independent of the trade mark owner.

For assistance in protecting your trade mark, please contact Certus Legal Group.