Picture this: you type your brand name into Google. As expected,
your brand's website is returned as an "organic"
result. However, a competitor's brand is returned as a
"sponsored" result (now known as a Google Ad), at the top
or to the right hand side of the results page. Considering that you
have probably invested time and money into protecting your brand,
the appearance of your competitor's brand front and centre on
the results page may understandably raise your ire – even if
it is identified as a paid advertisement.
How can this be prevented, you ask? Well, in light of
Google's AdWords Trademark Policy for Australia – most
recently updated in July this year – you might be hard
pressed to, unless your trade mark is used within the text of the
What you need to know
Under its policy:
Google will not investigate or restrict the use of third party
trade marks in keywords, even if it receives a complaint from the
trade mark owner.
Google will also permit the use of a competitor's trade
mark in an ad's display URL, as this is not considered
"use" of a trade mark.
Google will investigate complaints regarding the use of third
party trade marks in the text of Google Ads, and may restrict their
use. The most recent updates provide an exception to this
restriction, allowing for the use of others' trade marks in the
text of Google Ads placed by resellers, sellers of
replacement/compatible products, and informational sites.
Google significantly relaxed its AdWords Trademark Policy in
April 2013 in the wake of the High Court of Australia's
decision in Google v ACCC, where previously the policy for
Australia had allowed brand owners some measure of protection. In
Google v ACCC the High Court found that Google had not engaged in
misleading and deceptive conduct by publishing or displaying
"sponsored links" containing misleading or deceptive
content at the head of its internet search results (see
here for detail). After this decision, Google removed
protections for brand owners that had previously been in place
prohibiting advertisers from using others' trade marks and
business names as keywords. Google also removed its complaints
procedure relating to misuse of brand owners' trade marks in
At this point, Google still prohibited the use of others'
brand indicia in the body of the advertisements targeted
at Australian consumers without the authorisation of the brand
owner – unless the use was descriptive or for unrelated goods
Most recent changes
As of July this year, Google now permits advertisers targeting
Australia and New Zealand to use others' trade marks in the
body of their advertisements if they are reselling, advertising
replacement/compatible products to, or providing information about,
the goods or services relating to the trade mark. This brings the
policy into line with the United States, UK, Canada and
have the relevant trademarked product or services as its
primary focus; and
clearly provide a way to purchase, or display commercial
information about, the product or services.
In the case of informational sites, the landing page must have
the primary purpose of providing informative details about the
relevant goods or services.
Google will not allow ads that use the trade
marked term in a competitive way.
What can brand owners do?
For now, the best available approach for brand owners is to
remain vigilant across third party uses of their brands online.
If your trade mark has been used in the text of a
competitor's advertisement, you can:
Complain to Google. Google will investigate and may restrict
the use of the trade mark.
Seek legal advice. You may have remedies in an action for trade
mark infringement, passing off or misleading and deceptive conduct
under the Australian Consumer Law.
The issue of whether the purchase of keywords relating to a
rival's trade mark from the Google AdWords service can amount
to trade mark infringement has been litigated in many countries
around the world. In the UK, for example, it was held last year
that Marks and Spencer infringed Interflora's trade mark by
purchasing AdWords for "interflora" (see
here for our blog post).
Earlier this year the High Court of New Zealand handed down a
decision that the use of a competitor's trade mark as a keyword
in an AdWords campaign did not amount to trade mark infringement
(see Intercity Group (NZ) Limited v Nakedbus NZ Limited
 NZHC 124). The court did find, however, that use of the
trade mark in the ad's text constituted trade mark
infringement, passing off and misleading and deceptive conduct.
In Australia this issue is yet to be specifically litigated.
Watch this space!
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