Google Ads is the search engine’s pay-per-click (PPC) platform. It allows businesses to bid on keywords relevant to their offerings and is an excellent way to drive potential buyers of goods and services to a website. If a business wins a bid for a keyword, their advertisement will be listed at the top of Google’s results page when a consumer types the keyword into Google.
Google’s terms and conditions allow businesses to bid on any keyword they wish to use in an Ad campaign, regardless of whether it is a registered trade mark and irrespective of whether the purchaser owns that trade mark or not. This means your competitors are able to bid on your trade mark as a keyword, and their advertisement will then appear at the top of the search results when a consumer types the keyword into Google.
However, the use of trade marks in Google Ads campaigns has led to extensive litigation around the world. Many high-profile brands have turned to the Courts to seek legal redress for what they consider to be an unfair use of their brand identity and infringement of their trade mark. As with many online issues, the law in this area can be complex and difficult to navigate. In this article, our trade mark solicitors will discuss some of the most pertinent issues and will explain how the use of a trade mark in a Google Ad campaign could constitute trade mark infringement.
Contents:
- Why are competitors bidding on my trade marked brand names?
- The disadvantages of bidding on competitors trade marked brand names
- Can you bid on trade marked keywords in Google Ads? The position in the UK
- How do I resolve a Google Ads trade mark infringement dispute?
- How our trade mark solicitors can help
- Summary
Why are competitors bidding on my trade marked brand names?
Google controls over 90% of the search engine market worldwide, receiving billions of search queries every day. The potential commercial advantage to be gained by bidding on a keyword for the trade mark of a popular competitor, and your advertisement consequently appearing at the top of search results for that mark, cannot be overstated.
The disadvantages of bidding on competitors trade marked brand names
Despite Google’s policy of allowing any business to bid on a trade mark as a keyword, the position is not as clear cut as it may appear. Google’s own policy places restrictions on the use of keywords in the header or text description of the advertisement where they correspond with a trade mark the advertiser does not own, and the applicable law surrounding trade mark infringement will also come into play.
Can you bid on trade marked keywords in Google Ads? The position in the UK
Under UK trade mark law, a trade mark might be infringed if:
- An unauthorised third party uses a mark identical to a registered trade mark in respect of goods and services identical to those for which the trade mark is registered; or
- An unauthorised third party uses a mark identical to a registered trade mark in respect of goods and services similar to those for which the trade mark is registered, and there is a risk of consumer confusion as a result;
- An unauthorised third party uses a mark similar to a registered trade mark in respect of goods and services which are identical or similar to those for which the trade mark is registered, and there is a risk of consumer confusion as a result;
- An unauthorised third party uses a mark identical or similar to a registered trade mark on goods which are not similar, but where the trade mark is so well known that the third party use takes unfair advantage of it.
In the context of Google Ads, the position in the UK is that using a trade mark you do not own as a keyword will not, in itself, constitute infringement. However, any further use of the keyword in the title or text of the advertisement may stray into the realms of infringement in certain situations.
The key factor in determining whether the use of a trade mark as a keyword constitutes infringement, is whether that use is likely to confuse the consumer. If a consumer clicks on an advertisement believing it to be in some way connected with the trade mark owner, the use is arguably infringing. If, on the other hand, the advertisement makes it clear that the goods or services are merely being offered as an alternative to those of the trade mark owner, the use may be permitted.
The starting point differs depending on the status of the advertiser. The legality of the use in any individual case will depend on its own facts but, as a general rule, the position is as follows:
Trade mark owner – the trade mark owner can use the keyword at will in the advertisement.
Authorised resellers – the advertiser can use the keyword in the title and text of the advertisement, provided the landing page is dedicated primarily to selling the goods or services of the trade mark owner.
Informational websites – the advertiser can use the keyword in the title and text of the advertisement, provided the main purpose of the landing page is to provide information about the trade mark owner’s goods or services. A common example of informational websites is price comparison websites. Caution should be exercised to make sure that those comparisons are objective and verifiable.
Competitors – the advertiser cannot use the keyword in the title or text of the advertisement.
It is important to appreciate that the legal position varies between different countries. Use deemed lawful by the UK Courts might not be acceptable to those in Europe or further afield. Furthermore, different jurisdictions operate their own systems of calculating damages in the event your actions are found to be infringing. This difference in approach can have far-reaching effects in the context of online advertisements. If your advertisement is viewed by consumers in a different country, you may face infringement proceedings under that country’s law, with unexpected consequences.
In general, European Courts are considered less tolerant of the use of registered trade marks on PPC platforms than their UK counterparts. Take a recent case heard by the Spanish Courts. The Claimant alleged trade mark infringement against a competitor who had bid on and used the Claimant’s registered trade mark as a keyword in a Google Ads campaign. The Spanish Court held that the mere use of the mark in itself amounted to trade mark infringement. Further, Spain has a unique method of calculating damages for infringement, pursuant to which they can be based on 1% of the Defendant’s turnover. No proof of loss or financial harm is required. As a result, the Defendant in that case was ordered to pay over half a million euros in damages.
How do I resolve a Google Ads trade mark infringement dispute?
If you become aware of a competitor using your trade mark in their ad, you must take timely legal advice. By acting swiftly and decisively to address the issue as soon as you become aware of it, you will minimise any brand dilution and reputational damage.
An advisable initial practical step is to bid on your own trade marks as keywords. When multiple businesses bid on the same keyword, the position of the advertisement will be based on it’s ‘ad rank’. ‘Ad rank’ is determined by a business’s maximum bid and ‘quality score’. The ‘quality score’ refers to Google’s rating of a user’s overall experience of an advertisement and associated landing page. Since your advertisement and landing pages should be more closely associated with the keywords than those of a competitor, you should be able to temporarily push their advertisements down the results page. This will buy you time to address the issue with a trade mark solicitor.
Once they have assessed whether the use complained of constitutes infringement, your trade mark solicitor will usually begin by filing a complaint with Google. They will submit evidence of the infringement with reference to both Google’s own policy and the applicable law, and insist that Google takes action to stop it. In our experience, Google is far more likely to take such allegations seriously when made by an established law firm like ours, and our trade mark solicitors very often succeed in obtaining the removal of the offending ads.
If your brand name is not a registered trade mark, your position is far weaker. Registered trademarks are powerful rights and will protect your brand both on and offline. If you have not obtained the relevant registrations, you should do so now. Our experienced trade marks solicitors will identify those elements of your brand eligible for trade mark protection, and obtain all relevant registrations on your behalf. You can then enforce those registrations against any unauthorised third party using them, including in the context of PPC campaigns.
How our trade mark solicitors can help
Our trade mark solicitors are experts in the field. They are able to quickly assess a third party’s use of your trade mark and advise whether it constitutes infringement. Whilst some uses may be deemed lawful – if your competitor is using the trade mark in comparative advertising, for example – our solicitors’ extensive experience usually enables them to identify at least one unlawful act that can be relied on to force the removal of the advertisement.
Our trade mark solicitors have vast experience in acting for clients facing trade mark infringement issues on Google Ads and other PPC platforms. Their ‘on the ground’ experience is invaluable since it affords them a comprehensive understanding of each platform’s policies and how each platform deals with infringement complaints. These policies and the platforms’ approaches can vary in many material respects, so working with solicitors with the relevant experience saves time and, more importantly, costs.
If the PPC platform fails to remove the offending advertisement on the back of an initial complaint, our solicitors may follow up with a formal legal letter to the platform’s registered office, setting out the relevant case law and highlighting your legal rights. In some cases, they might also send a letter to the competitor personally, putting them on notice of your intention to take legal action if they infringe your intellectual property rights in the future. The receipt of a solicitors’ letter of this nature often focuses the recipient’s mind and avoids further infringement.
Our solicitors also regularly act for businesses accused of trade mark infringement in the context of PPC advertising. Again, they will swiftly assess the merits of the allegations before taking all available action to defend them on your behalf. Where necessary, they will rely on the concept of ‘unjustified threats’ to put pressure on the complainant to drop their complaint. This cause of action enables the recipient of a threat of infringement action to seek a declaration from the Court that the threat lacked justification, and to seek an injunction preventing the trade mark owner from making similar threats in future, together with damages for any financial loss caused.
Summary
The online landscape is constantly evolving, and the UK’s trade mark law was not designed with issues such as PPC advertising in mind. As such, the law has developed in a piecemeal fashion to deal with these new, novel concepts. Whilst general principles such as those outlined in this article apply, the nuances of an individual case are paramount. They will dictate whether the use of a registered trade mark is lawful.
Our trade mark solicitors have extensive experience in the area. They will act swiftly and decisively to provide straightforward, comprehensive advice and take all action available on your behalf to deal with your issue in the most cost-effective manner possible.
