Google recently announced a revision to its AdWords Trademark
Policy. From 23 April 2013, keywords that were previously
restricted as a result of a trade mark complaint and investigation
are no longer restricted in Australia (and China, Hong Kong, Macau,
Taiwan, New Zealand, South Korea and Brazil).
This means that since 23 April 2013, an advertiser can use a
third party's trade mark as a keyword in its AdWords. This
amendment brings Australia in line with how the AdWords trade mark
policy is applied in other parts of the world.
While this change will not prevent a trade mark owner from
making a complaint about the use of their trade mark in a
competitor's AdWords, Google will not act to prevent the use of
that trade mark. Prior to 23 April, the Google AdWords Trademark
Policy provided that where a trade mark of a third party appeared
within ad text, and a complaint was made by the trade mark owner,
Google would restrict the use of the trade mark and the ad text may
not have been allowed to run.
This policy change comes on the back of the recent High Court
decision in Google Inc v Australian Competition and Consumer
Commission  HCA 1. In this case, the High Court found that
Google was merely a publisher and was therefore not liable for the
misleading or deceptive conduct of its advertisers in relation to
sponsored links. Sponsored links are a form of advertisement
created by, or at the direction of, advertisers willing to pay
Google for advertising text that directs users to a web site of the
advertiser's choosing. The Court found that Google did not
author the sponsored links; it merely published or displayed,
without adoption or endorsement, misleading representations made by
While not endorsing the use of third party trade marks in
AdWords, the amended Google Policy states that 'Google is not
in a position to make recommendations regarding the use of terms
corresponding to trade marks. If you have any further questions, we
encourage you to contact your legal counsel and consult AdWords
Terms and Conditions.'
Advertisers who are planning on using a third party's trade
marks should be aware that while Google may not be liable for
misleading or deceptive conduct, depending upon the circumstances,
the advertiser may be.
What does this mean for you?
From 23 April 2013 an advertiser can use a third party's
trade mark as a keyword in its AdWords.
If you had a restriction in place as a result of a successful
complaint to Google about the use of your registered trade mark in
a third party's AdWords, this restriction has ceased to
This policy change is likely to increase the difficulty and
costs for companies seeking to protect their trade marks from
(mis)use by competitors in Google AdWords.
Businesses should revisit their AdWords portfolios and
strategies in light of this important change.
Winner – EOWA Employer of Choice for Women Citation 2009,
2010, 2011 and 2012
Winner – ALB Gold Employer of Choice 2011 and 2012
Finalist – ALB Australasian Law Awards 2008, 2010, 2011 and
2012 (Best Brisbane Firm)
Winner – BRW Client Choice Awards 2009 and 2010 - Best
Australian Law Firm (revenue less than $50m)
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).