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.
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
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.
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
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
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
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
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
in Australia – Google should remove the offending
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.
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