In brief
From 23 April 2013, Google will no longer prevent users of its AdWords programme from using another party’s registered trade marks as keywords in China, Hong Kong, Macau, Taiwan, Australia, New Zealand, South Korea, and Brazil. Whilst this brings Google’s AdWords policy into line with other jurisdictions worldwide, trade mark owners must now be even more vigilant in monitoring the market, and in particular the search engine optimisation strategies of competitors to ensure that valuable rights are not infringed or a competitive advantage lost.
Google has announced that it will allow the use of trade marks as keywords in its AdWords programme from 23 April 2013.
Google’s revised trade mark policy for China, Hong Kong, Macau, Taiwan, Australia, New Zealand, South Korea, and Brazil comes in the wake of the High Court decision discussed in our article last month Business Owners – Take Care When Buying Sponsored Links.
To recap, the High Court ultimately found that Google had no responsibility for the terms users of its AdWords programme chose and that it is in fact users of the service (and not Google) who are liable for any representations they make as a result of the use of AdWords search terms.
Under the revised policy, Google will not investigate the use of trade mark terms in keywords even if a trade mark complaint is received. This means that it will be even more important for a brand owner to consider securing its key brands or registered trade marks as AdWords for its own goods and services, so as to prevent a competitor from doing so. With the removal of the current relatively straight-forward procedure of lodging a complaint, and seeking removal of the complained term through Google, it will be incumbent on trade mark owners to be much more proactive in securing all key terms as possible search terms.
It also makes a market or competitor monitoring program much more important as a tool for ensuring a brand or portfolio is not diluted or devalued by competitor activity.
From 23 April 2013, if a competitor does obtain another brand name or trade mark as a key word, it will be more difficult, time consuming and expensive to stop any improper use. The only option (if the competitor is not prepared to give up the use of the term voluntarily) is to take Court action against the competitor for trade mark infringement or misleading and deceptive conduct. This will be significantly more expensive and time consuming than the current Google complaints process.
If at the moment you are aware of any use of your brands or trade marks by competitors as part of AdWords you need to take action about that now, and before 23 April, in order to take advantage of the current process.
