Proof That Even IP Lawyers Need IP Lawyers

When searching for Adams & Adams, another IP firm appeared in the sponsored Google results. That, in itself, is not unusual. As the largest IP firm in our market, competitors will sometimes bid on our name as a keyword. The commercial advantage is obvious: it allows the competitor’s advertisement to appear alongside (or even above) us in search results and capture the attention of users already looking for our services.

The legal position on this was clarified in Cochrane Steel Products v M-Systems Group some years ago. In that case, the Supreme Court of Appeal held that the mere bidding on a competitor’s trade mark as a Google Ads keyword is not, in itself, unlawful. Admittedly, that case did not involve a registered trade mark, but it was in line with EU decisions on this point. The SCA found that the key question was whether the advertisement itself gives rise to deception or confusion. Where the competitor’s mark is used only in the background as a trigger (and not in the visible advertisement), and the ad clearly identifies the advertiser, the court found that this is simply a form of healthy competition, and that today’s internet savvy consumers would know that they were merely being offered alternatives. They would not be confused or misled.

The difference here, however, was that our name, Adams & Adams, which is also a registered trade mark, was used within the competitor’s advertisement itself, under its own name.

That crosses the line.

Using another party’s registered trade mark in your advertising in a way that suggests association or endorsement is a very different proposition and will typically amount to trade mark infringement.

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