Australia: The little known defence in the fight against the misuse of brands online

Introduction

Brand owners have long struggled to protect their brands online. First there came domain name pirates, then online parodies through You Tube and the like, social media bandits and now the ongoing battle against the misuse of brands as adwords. There is a means by which brand owners can exclude their registered trade mark from use as a Google adword by unauthorised users with the 'Google Adwords trademarks complaint form'.

Adwords are a key source of revenue for internet search engines. They allow for advertisers to place their advertisements along side the search results which they consider are most likely to draw customers to their own products or services. Many brand owners find their competitors purchasing their brands as adwords. This can allows competitors to place their advertisement at the top of the internet search results for another brand, thereby potentially diverting internet traffic away from the real brand owner.

Court actions

This issue has been dealt with on several occasions through the Courts across many of our key trading jurisdictions, including Europe and the United States. The fact that the issue has caused so much litigation demonstrates it is an area of concern. Most recently in Australia the ACCC succeeded in its Federal Court appeal against Google, claiming its advertisements were misleading and deceptive. The Court found Google had engaged in misleading and deceptive conduct by showing advertisements referring to competitors, where those competitors have purchased the keywords of their rivals, on the Google search engine results pages. The Court ordered Google to introduce a consumer law compliance program as part of its decision.

Regardless of this positive legal outcome, for those wanting to prevent misuse of their brands, these issues will continue to grow as all aspects of daily life and commerce accelerate into the online sphere. As Court actions can be time consuming, costly, uncertain, and by their very nature retroactive, it pays for brand owners to be vigilant to protect their own rights.

Opting out of Google adwords

What many brand owners don't know is that there is a very simple and practical tool that can be utilised to prevent adword misuse. Through Google's 'AdWords trademark complaint' process brand owners can quickly and easily exclude their brands from the possibility of being purchased as a Google adword by their competitors.

Google has a simple online process for opting out of its adwords system. The Google 'AdWords trademark complaints' form allows for 2 types of complaints. The first is a complaint against all users (which would remove your registered mark from use by any one not specifically authorised). The second is a complaint against a specific user. To opt your brand out of the adwords system, the process simply requires entering your own Google customer identification together with your registered trade mark details into an online form and then selecting the option to exclude your trade mark from use by all advertisers, rather then submitting a complaint against a particular advertiser. It is important to note that this complaint system can relate to either keywords or advertisement text within the Australian region.

When completing the form, it is important to include your own Google identification details so that you are not excluded from using your own brand as an adword, and to also list any authorised users.

You do need a trade mark registration to utilise the system. A trade mark registration is the first line of defence for any brand and so any brands which are important enough to prevent misuse should be registered in any event.

When the alternative to preventing misuse of your brand as an adword is a line of potentially endless cease and desist letters, or litigation through the Courts, the benefits are obvious. This is a tool brand owners should be utilising to its full extent. If you would like any further information, contact any member of our IP team or view the form here.

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.