Source: Wealth Creator Magazine Sep/Oct 2006

Strategies for online brand protection

If you are a registered trademark owner and suspect or have evidence that your company's trademark has been infringed, you may send a written complaint to Google who may investigate the matter further.
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Google Adwords and Trademarks

Source: Wealth Creator Magazine Sep/Oct 2006

Google Adwords and Trademarks

Companies engaged in electronic commerce must develop strategies that effectively use the Internet's architecture and tools for marketing to customers. Commercial strategies that optimise the Internet's search engine potential include the effective use of meta-tags in web-pages, pay-per-click advertising campaigns, and a variety of web-based analytics tools.

Google AdWords and your brand

This article considers Google's AdWords service, a search engine feature which allows a company to bid for keywords that trigger a Sponsored Link to the company's own website when used as search terms in Google searches.

Google AdWords, however, has triggered a spate of litigation around the world with companies suing Google, arguing that Google is infringing their trademark by selling the company's registered trademarks as search keywords to their competitors.

Recently in Australia AAPT complained to Google that Telstra had purchased AAPT's trademark "AAPT from Google AdWords. The result was that when a user searched for "AAPT" using Google a Sponsored Link for Telstra would appear.

It may be argued that Telstra's behaviour (as well as Dell's, who have acted in a smilar manner as reported by The Australian Newspaper) is a legitimate form of comparative advertising, increasing the customer's information and subsequently improving their decision-making. Alternatively, it may be argued that such behaviour is illegal, constituting both trademark infringement and misleading and deceptive conduct in Australia.

Google in court

In Australia, it is unclear whether Google's AdWords services constitute trademark infringement. Courts in several jurisdictions, including US, UK, and French courts, have considered the legal issues arising out of the Google AdWords. The court judgments in each country vary.

In the US case Google v GEICO, Geico (an auto insurance company) sued Google for trademark infringement by allowing advertisers to bid on its 'GEICO' trademarks, and then pay Google for the triggered advertisement.
In December 2004, the court found there was no infringement where the trademark was only used as a keyword that triggered the Sponsored Link because Geico had not provided evidence consumers would be confused or misled by the Sponsored Links. The judge found infringement where the Sponsored Link displayed the trademark as text, as the evidence showed the advertisement was likely to confuse consumers.

The judge left open the question as to whether Google would itself be liable for the infringement in addition to the infringing advertiser. The matter was subsequently settled out of court.

The UK case of Reed Executive v Reed Elsevier concerned pop-up banner advertisements, a similar concept to Sponsored Links on the Internet. Reed Elsevier, owner of totaljobs.com website, purchased Reed Executive's registered trademark "Reed" from Yahoo, so that a Yahoo search of the word "Reed" triggered a banner advertisement for totaljobs.com website. The court found no infringement because online users would not believe that the totaljobs website was related to the keyword "Reed".

By contrast, French courts have found against Google AdWords in cases including those brought by Louis Vuitton and the Le Meridian hotel chain.

Both the US and UK cases suggest that courts assume that Internet users are market aware and would not associate the advertisements with the registered trademark used as a keyword.

In Australia

Under Australian law, courts would consider whether the trademark was 'used' as a sign to indicate to consumers that the competitor's website was associated with the registered trademark, and courts may once again consider the likelihood that consumers would be confused in this manner.

In Australia, Sponsored Links may also be considered to be misleading and deceptive conduct under the Trade Practices Act. Therefore you can write to the Australian Competition and Consumer Commission (ACCC) if you believe that a Sponsored Link on Google infringes your trademark or is potentially misleading to your potential customers.

The fluidity of national boundaries online may allow companies to get around national trademark laws. While it may be illegal for a French company to purchase another company's registered trademark as a search keyword in France, that French company may still legally purchase the same keyword from US Google. The French company would then be able to market to French consumers using its Sponsored Links or banners from the US website. Google's more limited policy in relation to US and Canadian trademarks makes sense in light of the ruling in Geico's case.

Strategies for online brand protection

If you are a registered trademark owner and suspect or have evidence that your company's trademark has been infringed, you may send a written complaint to Google who may investigate the matter further. Google has two different AdWord policies - one aimed at companies in the US and Canada, and one intended for companies in the rest of the world. If Google receives a complaint from the owner of a trademark registered outside the US or Canada, Google may remove the registered trademark from its competitors' keyword list. However, for owners of trademarks registered in the US and Canada, Google will make sure the trademark does not appear in the content of the ad, but the policy does not offer to remove the keyword as a trigger to the Sponsored Link.

In Australia it is critical that companies with an online presence develop a comprehensive electronic marketing strategy that promotes their website to potential customers through links, advertisements and banners while protecting company goodwill and registered trademarks from competitors. While the legal status of Google AdWords remains uncertain in Australia, if you do notice your competitors exploiting your trademarks on Google AdWords, it is advisable to immediately notify your competitors, Google or the ACCC. You may further wish to contact an intellectual property and Trade Practices Lawyer to institute proceedings seeking an injunction against your competitor for trademark infringement and misleading and deceptive conduct.

NB: I wish to thank Ilana Lichtenstein for her research and assistance in preparing this series of articles relating to Intellectual Property.

 

Written by:

Julian Stephens is Principal of Melbourne firm Stephens Lawyers and Consultants, a barrister and solicitor of the Supreme Courts of Victoria, New South Wales, Western Australia and the Northern Territory. Julian practices extensively in the area of licensing, high technology and computer law, and related corporate advice.
www.stephens.com.au