Google AdWords

Google AdWords is a paid referencing service provided by Google which allows advertisers to purchase selected "keywords" which, when entered into Google's search toolbar, trigger that advertiser's advertisements alongside or above Google search results. Google AdWords drive web traffic to specific websites to increase page views and sales.

Europe

In Europe, three French cases raised the question of whether, by allowing advertisers to purchase AdWords which correspond with registered trade marks, Google should be held liable for trade mark infringement. Louis Vuitton filed one of these cases. It argued that by permitting advertisers to purchase keywords featuring its "Vuitton" and "LV" trade marks to drive web traffic to websites that sell imitation Louis Vuitton goods, Google had infringed its trade marks.

All three cases were referred to the ECJ for a ruling which it delivered on 23 March 2010. The ECJ found that Google's sale of keywords which were identical to registered trade marks did not amount to "use" of a trade mark to establish trade mark infringement.

The ECJ did rule that registered trade mark owners were entitled to prevent advertisers from purchasing AdWords comprising their trade marks, if the effect of this conduct was to cause an average internet user difficulty in ascertaining the true origin of the goods or services being offered by reference to the AdWords. This prohibition applied even if the advertiser's intention in using the AdWords was to compare its goods or services to those of the registered trade mark owner or to offer consumers an alternative good or service.

Australia

In Australia Google will not allow anyone else to use a registered trade mark as AdWords after notification of the trade mark owner's rights. This is not the case in Europe.

In Mantra v Tailly, Mantra was the exclusive on-site letting agent of the Circle on Cavill complex on the Gold Coast. Mantra owns a number of trade marks for "Circle on Cavill". Tailly leased 39 apartments in the Circle on Cavill complex from the owners of the apartments and then sub-let these apartments to people seeking holiday accommodation.

Mantra filed proceedings against Tailly alleging infringement of its trade marks:

  • by registering a series of domain names which included "Circle on Cavill", and variations of these words
  • by using its trade marks prominently at the corresponding websites
  • by including the trade mark up to 250 times in the meta information underlying its websites
  • by purchasing Google AdWords for the trade marks.

In a landmark decision, the Federal Court found that Tailly had infringed Mantra's trade marks as it used these marks in the domain names and at the websites to promote itself as the provider of accommodation services. This was the first time that an Australian court had decided that registering and using a domain name comprising a trade mark constituted trade mark infringement.

Tailly was:

  • permanently restrained from using the trade marks in the advertising, promotion or supply of accommodation, including as part of a domain name, meta-tag, search engine keyword or business name; and
  • directed to transfer its domain name registrations to Mantra and transfer all profits from infringing bookings to Mantra.

Therefore an Australian court showed that it was prepared to restrain the registration of Google AdWords that correspond with a registered trade mark. This is important where Google refuses to remove AdWords for various reasons including descriptiveness of the trade mark.

How we can help

First and foremost, these cases demonstrate the importance of comprehensively registering trade marks.

Clients should monitor the Google search engine to ascertain whether registered trade marks have been purchased as Google AdWords and immediately instruct us to write to Google if a third party is using a registered trade mark as AdWords. If an infringer has used a registered trade mark as Google AdWords:

  • in Europe – this is trade mark infringement by the third party
  • in Australia – Google should remove the offending advertisement.

If there is further use of the trade mark in Australia in domain names, meta information or on a website, Mantra v Tailly is authority that this use can be restrained.

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.