Google AdWords, Trade Mark Infringements, EU Law and M&S

Google AdWords is Google’s paid search (Pay per Click) advertising system which places sponsored adverts above the normal “organic” results and also on the right hand side of Google’s search results pages.

M&S purchased the “keyword” – “Interflora” as part of its Google AdWords advertising campaign. This means Google users searching for “Interflora” would see a sponsored ad from M&S above the normal search results.

The practise of bidding for top placement of competitor brand names and Trademarked keywords in Google, Yahoo! Bing and other search engines has been widely used around the world.

In European Union (EU) Trademark law the notion of ‘Dilution Protection’ has the aim of protecting against Blurring (the danger of a Trade mark losing its distinctive character and/or its value), Tarnishment (the damaging of the reputation of a Trademark) and Free-riding (a competitor taking an unjustified advantage from unauthorised use of another’s Trade mark).

The European Court of Justice has heard Google AdWords cases before and has not ruled against it in principle.  In the M&S case the Advocate General (the Court’s independent lawyer) has advised that use of a Google AdWords keyword that is identical to a Trademark can be attacked as trade mark infringement where the resulting ad:

  1. Does not do enough to show the advertiser is not associated with the Trademark holder; or
  2. Uses the Trademark generically in a way reducing its value as a Trademark or seeks to benefit from the Trademark’s prestige and the owner’s marketing efforts.

For a long time Google AdWords had seemed to be a legal alternative to obvious Trademark infringements like domain name squatting. The Courts now seem likely to strike a balance between allowing AdWords and similar schemes in principle, and applying trade mark law to how advertisers use them in practice.

Google AdWords and other search engine keyword (Pay per Click) advertising platforms are still legal but businesses using them will have to be smarter about keyword selection and the messages they use in paid search advertising. Comparative advertising is allowed if done properly and the Opinion in the M&S AdWords case includes comments supporting that kind of Trademark use.

Making the Trademark owner pay more for the matching keyword in order to fend off competitors is not a Trademark infringement according to the Opinion in the M&S case; so the tactical battles around Google AdWords and other search engines will continue.

Any business using paid search advertising in the UK or EU should take legal advice to avoid being on the wrong end of a judgment like the one that seems inbound to M&S. Like other legitimate uses of Trademarks belonging to other businesses, AdWords is only safe and effective if done properly.

The Intellectual Property Solicitors at Forbes can help if your business has issues around Trademark use and abuse. Contact our Solicitors online or call freephone 0800 037 4628

Daniel Milnes

About Daniel Milnes

Dan is a Partner and Head of Contracts & Projects. Dan’s blogs cover the areas in which his specialities lie in commercial, regulatory and governance law which cover a broad range of matters dealing with contracts, projects, corporate and group structures, funding and compliance with a range of legal regimes including data protection. This also involves writing and advising on various forms of commercial contracts including joint ventures, development and construction agreements and intellectual property contracts including IT agreements, sponsorships and other rights licensing arrangements.
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