UK: Clarity on Google AdWords and Trade Mark Infringement

Last Updated: 23 August 2010
Article by Craig Smith

Google's AdWords service is a helpful tool in getting your business name to the top of the Google listings when the search facility is used. However there is uncertainty regarding to what extent one business can use another business's name or trade mark as an AdWord.

We are often faced with the following questions:

  • Can I use other companies' trade marks as Google AdWords to attract business to my site?
  • How can I stop others from using my company's trade mark as a Google AdWord to attract people to their site?

Google's AdWords service allows a party to purchase a word or series of words (an "AdWord") which, when typed into Google's search facility, results in the purchaser's advert appearing at the top or on the right hand side of the results page under the "Sponsored Links" section. Google does not prevent parties from purchasing AdWords which are registered trade marks of other businesses.

The European Court of Justice (ECJ) has provided guidance on the use of Adwords and whether their use by a party other than the trade mark owner, constitutes trade mark infringement. This article gives practical guidance following the EJC's rulings.


Following the ruling by the European Court of Justice ("ECJ") in Portakabin Limited and Portakabin BV v Primakabin BV, a company can prevent another company from using its trade mark as an "AdWord", where the advert in question does not allow an ordinary internet user to identify whether the goods being provided through the advert originate from the original trade mark owner or a third party.

Plainly speaking, this means that where one company uses another company's name or mark as an AdWord, the advert shown in the Google listing must make it clear that the advert does originate from the company that owns the trade mark. Where the advert does not allow an ordinary internet user to make such a distinction, the use of the AdWord may amount to trade mark infringement.

The Portakibin case referred to above is a dispute regarding the use of the trade mark "Portakabin". The registered owners of the trade mark raised an action for trade mark infringement against "Primakabin". Primakabin had purchased from Google the word "Portakabin" as an AdWord together with some common mis-spellings of the word so that when these words were typed into Google by an internet user, Primakabin's advert would appear as a "sponsored link" at the very top of the Google listing for the search.

Portakabin argued that this use of their mark was an infringement of their trade mark by Primakabin.

Although no decision has been reached in the case, the ECJ has clarified that in order to avoid an infringement, the advert must make it clear that there is no commercial connection between the advertiser and the trade mark owner whose mark has used as an AdWord.


The Portakabin judgement also clarified that the same rule will apply where a mis-spelling of a trade mark has been purchased. In the Portakabin case, Primakabin purchased not only the word "Portakabin" to use as an AdWord, but also the word misspelt in various different ways. The reason being that many internet users will spell the word incorrectly and any mis-spelling will be caught with the use of the AdWord. In such cases, the same rule applies and the advertiser is at risk of trade mark infringement in the same way as detailed above.


It is also worth pointing out that the ECJ in a previous decision (Google France v Louis Vuitton) held that where an AdWord is used in a way that is likely to constitute trade mark infringement then Google will not, in principle, be held liable for this.

If a competitor is using an AdWord in a way that represents an infringement of your company's trade mark, then although you will have a right to sue the competitor, you will not be able to sue Google unless you have clearly notified Google of the infringement and Google have failed to take action to remove the advert.


Tips for Advertisers

  • The use of an AdWord that is also a registered trade mark is not in itself an infringement of that trade mark.
  • Use of an AdWord that is also a registered trade mark will only be an infringement of that trade mark where an ordinary internet user is led to believe, by the advert, that there is a link between the advertiser and the trade mark owner.
  • Where the advert does nothing to distinguish the advertiser and the trade mark owner, resulting in a likelihood of confusion as to the origin of the goods, then this may amount to a trade mark infringement.
  • Advertisers using AdWords that are also registered trade marks must make it clear that there is no commercial connection between it and the trade mark owner whose mark it has used as an AdWord.

Tips for Trade Mark Owners

  • Trade mark owners should be vigilant when it comes to monitoring use of their trade mark. Should a search of the trade mark in Google result in the advert of a competitor appearing in the "Sponsored Links" section, the advert must make it clear that the goods or services being advertised are NOT those of the trade mark owner.
  • Should a trade mark owner consider there to be a risk of confusion as a result of the advert, then the trade mark owner should take legal advice on taking steps to remove the advert.
  • Trade mark owners may wish to purchase their mark as an AdWord in order that their advert appears alongside the rival advert in the "Sponsored Links" section. This will give the consumer a direct choice between your company and the rival company, without the rival having any sort of an advantage.

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

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.