Google’s recent AdWords policy change relaxes the rules for parties looking to use a trade marked term to trigger advertisements. What will be the impact of this on brand owners and how does Google’s change of tack fit with UK trade mark law? Read on for Jessica Stretch’s unsponsored search result.
Topic: On-line advertising
Who: Google Inc.
When: 5 May 2008
Where: UK & Ireland
Law stated as at: 23 April 2008
What happened:
Under Google's current AdWords policy, a trade mark owner can prevent another party from sponsoring its trade mark as a search term ("keyword") to trigger an advertisement that appears alongside the natural Google search results. The trade mark owner can file a complaint with Google if an advertisement is using a term corresponding to a trade marked term in the ad text or as a keyword trigger. Once Google has investigated such a complaint, it will require the advertiser in question to remove the trade marked term from the ad text or keyword list and prevent the advertiser from using the trade marked term in the future.
As of 5 May 2008, Google has lifted this restriction in the UK and Ireland. A party is now entitled to sponsor any trade mark as a keyword trigger so that its advertisement appears next to the search results. This change will bring the Google AdWords policy into line with the US and Canada.
"Limited checks of brands in ads to continue"
Brand owners should note that it will still be the case that advertisers are not allowed to use a trade marked term in the actual advert itself and this could constitute trade mark infringement. Google will continue to conduct limited investigations of complaints regarding the actual text of advertisements that allegedly infringe trade mark rights.
This change of policy follows the recent "Mr Spicy" decision by the High Court. The owner of a trade mark for MR SPICY took action against Yahoo! for trade mark infringement as it displayed advertisements alongside the search results when "Mr Spicy" was entered as a keyword search term. The High Court cleared Yahoo! of trade mark infringement, in part on the basis that the advertisers had sponsored the dictionary word "spicy" rather than the trade-marked term "mr spicy".
It appears that Google has relied on this decision as a green light to relax its trade mark policy. Google's new policy does not extend to Continental Europe where the Courts take a more restrictive view on the use of trade marks in AdWords although this is not a settled area of European law. However, given that European trade mark law is harmonised, it is conceivable that a trade mark owner could use a future ECJ decision to challenge Google's new policy in the UK and Ireland.
Why this matters:
With this policy change it is inevitable that registered trade marks will become a part of the keyword bidding process and thus increase the costs of advertising via a trade mark keyword, particularly if the brand owner wants its advertisement to appear first in the list.
