Google's change of keyword policy means trade mark
owners must continue to be vigilant and monitor competitors'
use of their marks in Google AdWords campaigns
Google recently changed its AdWords Trademark Policy to allow
advertisers to use a competitor's trade mark as a search term
for their advertisements. As of 23 April 2013, Google will
not investigate or restrict the use of trade mark terms in search
terms (known as "keywords"), even if a trade mark
complaint is received. The result of this change of policy
is that keywords that were previously restricted due to a trade
mark complaint are no longer restricted in China, Hong Kong, South
Korea, Macau, Taiwan, Brazil, New Zealand, and Australia.
In response to search requests, along with organic search
results, Google displays paid advertisements which are denoted as a
"related ad" or "sponsored link". These
"related ads" or "sponsored links" will appear
in response to selected search terms chosen by the advertiser.
Until recently, an advertiser targeting consumers in Australia
could not use a trade mark the subject of complaint or
investigation as a keyword. However, this change in policy means
that advertisers can now ensure that when a consumer uses a
competitor's trade mark as a search term, the consumer sees a
sponsored link to the advertiser's product as well.
While advertisers can now use a competitor's trade mark as a
keyword in their search terms, there is still a policy restriction
on using words subject to a trade mark complaint or investigation
in the text of a sponsored link. However, advertisers can use a
competitor's trade mark in the display URL as this is not
considered to be part of the "text". (A display URL is
the URL that appears below the sponsored link. This is not
necessarily the same as the domain URL on the landing page.)
Google has stated that it will not investigate or restrict the
use of a trade mark in a display URL because the presence of the
trade mark within the display URL may not necessarily constitute
trade mark use, particularly in the case of post-domain paths or
What does this mean for trade mark owners?
Google claims that this change will lead to a more consistent
policy and a better user experience worldwide. However, trade mark
owners should remain vigilant in monitoring use of their marks by
competitors as keywords for sponsored links.
Google's policy change does not mean that the use of a
competitor's trade mark as a keyword in advertisements will not
amount to trade mark infringement. However, it may be difficult to
establish that keywords – particularly if not displayed to
the consumer as part of the advertisement – are used "as
a trade mark". Infringement of a registered trade mark can
only occur if this can be established.
In addition, the trade mark owner might be able to take action
against the advertiser if the use of the trade mark constitutes
misleading and deceptive conduct under section 18 of the Australian
What does this mean for advertisers?
The High Court decision in Google Inc v Australia Competition
and Consumer Commission serves as a reminder that advertisers will
still be held responsible for the content of their advertisements,
whether online or in traditional media.
The use of a competitor's trade mark in a sponsored link may
still be an infringement of the ACL by the advertiser. To avoid
potentially unlawful conduct, advertisers should avoid using a
competitor's trade mark in their headline, text, keywords or
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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