From 23 April 2013, Google will no longer prevent users of its
AdWords programme from using another party's registered trade
marks as keywords in China, Hong Kong, Macau, Taiwan, Australia,
New Zealand, South Korea, and Brazil. Whilst this brings
Google's AdWords policy into line with other jurisdictions
worldwide, trade mark owners must now be even more vigilant in
monitoring the market, and in particular the search engine
optimisation strategies of competitors to ensure that valuable
rights are not infringed or a competitive advantage lost.
Google has announced that it will allow the use of trade marks
as keywords in its AdWords programme from 23 April 2013.
To recap, the High Court ultimately found that Google had no
responsibility for the terms users of its AdWords programme chose
and that it is in fact users of the service (and not Google) who
are liable for any representations they make as a result of the use
of AdWords search terms.
Under the revised policy, Google will not investigate the use of
trade mark terms in keywords even if a trade mark complaint is
received. This means that it will be even more important for a
brand owner to consider securing its key brands or registered trade
marks as AdWords for its own goods and services, so as to prevent a
competitor from doing so. With the removal of the current
relatively straight-forward procedure of lodging a complaint, and
seeking removal of the complained term through Google, it will be
incumbent on trade mark owners to be much more proactive in
securing all key terms as possible search terms.
It also makes a market or competitor monitoring program much
more important as a tool for ensuring a brand or portfolio is not
diluted or devalued by competitor activity.
From 23 April 2013, if a competitor does obtain another brand
name or trade mark as a key word, it will be more difficult, time
consuming and expensive to stop any improper use. The only option
(if the competitor is not prepared to give up the use of the term
voluntarily) is to take Court action against the competitor for
trade mark infringement or misleading and deceptive conduct. This
will be significantly more expensive and time consuming than the
current Google complaints process.
If at the moment you are aware of any use of your brands or
trade marks by competitors as part of AdWords you need to take
action about that now, and before 23 April, in order to take
advantage of the current process.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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