Infringing Trade Marks Through Google AdWords

This article was included in our Winter 2010 edition of Inside IP magazine.

In the light of recent ECJ decisions, Google has altered their policy regarding the sale of AdWords.

AdWords

The Google AdWords system allows advertisers to tie their advert to a keyword.

An advertiser may buy any keyword, including trade marks owned by third parties. This means that when an internet user includes the keyword in a search, the advertisement will appear in the sponsored links section of the search results.

A number of trade mark owners have been concerned by the use of their trade marks in this way and have sought relief in national courts.  This has led the relevant national courts to seek clarification from the European Court of Justice (ECJ) as to the legal position.

ECJ

Following references from various national courts the ECJ has held that, as an internet referencing service provider, Google does not infringe registered trade marks by selling them as keywords through its AdWords system to advertisers.  Whilst Google’s offering and selling of keywords is a commercial activity, Google does not use those keywords in their own communications in the course of trade, so their use cannot be trade mark infringement. Rather, it is the advertiser who uses the trade mark as a keyword and so it is the advertiser who may be liable for trade mark infringement.

Advertisers

Advertisers will be liable for trade mark infringement where the essential function of a trade mark is adversely affected, i.e. when its ability to identify the goods/services as being those of the trade mark owner is jeopardised.

On which side of the line will an advertiser’s use of a trade mark as a keyword fall?

The ECJ has explained  that there can be infringement of a registered trade mark when that trade mark is used as a keyword by someone unrelated to the mark’s proprietor.  Infringement only occurs, however, if the use leads to the average internet user being confused as to whether the goods and services mentioned in the advertisement are those of the trade mark owner or are somehow connected, or are from a different entity entirely.   There is also infringement where an advertisement is so vague that the average internet user can only identify the origin of the advertisement “with difficulty”.

This means advertisers can use third party trade marks as keywords but, when they do so, they will need to ensure that their advertisements clearly distinguish the origin of the goods and services of the third party trade marks they are using.

Google’s policy

Google has amended their AdWords policy in the EU regarding the use of a trade mark as a keyword in light of the ECJ decisions, which will help to ensure that advertisers avoid being so vague that they risk infringing.  There is also the facility for trade mark owners to raise any concerns they might have with Google.

It is still possible to select a trade mark as a keyword but trade mark owners can now request that advertisements are removed.  Google will remove an advertisement where the combination of a trade marked keyword and the advertisement text is confusing as to the origin of the advertised goods and services.

Provided there is no confusion, advertisers may use trade marked keywords to display certain types of advertisements.  These include use of the trade mark in a descriptive way, or relating to resale or sale of components or informational sites.  Use of a trade mark in the advertisement text is permitted only in the UK and Ireland (and the US and Canada) and only when particular conditions are met.

If you are concerned about the use that a third party is making of your trade mark, it is possible to raise this with Google so that appropriate changes are made.  If you would like any assistance or any other advice regarding third party use of your trade mark please do not hesitate to contact the author or your regular attorney.

29 Nov 2010

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