The High Court has issued a judgment which may influence how you
use Google Adwords in New Zealand.
The judgment relates to a dispute between Intercity and NakedBus
regarding NakedBus's use of the trade mark INTERCITY (and
variants) as Google Adword keywords, within the advertisements
generated and on NakedBus's website.
Details on this case were included in our note last year –
which can be seen
What this decision means for you
Based on this decision, while you should still consider the
overall context of your advertising, use of a competitor's
trade mark as a keyword is acceptable in New Zealand provided there
is not further use in the advertisement or on the website linked
Summary of findings and reasoning
The court has found that:
NakedBus's use of INTERCITY and INTER CITY as keywords to
generate advertisements did not infringe Intercity's trade mark
registrations for INTERCITY, amount to passing off, or breach the
Fair Trading Act;
NakedBus's use of INTERCITY and/or INTER CITY as a keyword
in combination with use of those terms in the text of the
advertisements (and on its website) infringed Intercity's
INTERCITY trade mark registrations, amounted to passing off and
breached the Fair Trading Act.
In reaching his decision the Judge found that while NakedBus had
used the INTERCITY trade mark in trade (a necessary element for
trade mark infringement under section 89(1) of the Trade Marks
Act), that use was not in such a manner as to render the use of the
sign as "likely to be taken as being used as a trade
mark" (a further necessary element at section 89(2) of the
Act). Key to that decision was his acceptance of the argument that
if the "use" could not be seen by the consumer it could
not be "taken as" anything, let alone "taken as
being used as a trade mark". In the absence of evidence to the
contrary, the Judge was unwilling to assume that the consumer would
know or understand the use of keywords.
The Judge did leave the door open for cases where silence in the
advertisement could result in liability as was found in the
Interflora case discussed in our
On the basis of media statements it appears unlikely that
Intercity will appeal the keyword finding.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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