Google Adwords may cause potential trade mark trouble

With everyone’s lives moving online, it is now the key focus of a business attention, especially when it comes to advertising.

The majority of the general public will gain their recommendations for services or goods from what is online, whether that is an advert or another user’s review.

Therefore, the demand and cost of online advertising is rising along with the risk of potential IP problems.

A growing source of online advertising is Google AdWords.

Google AdWords allows users to purchase a keyword which is relevant to their business. Every time a user of Google searches for this keyword, their website will appear at the top of the search list. This will seem to the user as a natural result therefore prompting them to trust the site.

If more than one business wants to use a specific keyword, the higher bidder will be seen first, not the business that has the most rights over the keyword.

This monopoly over keywords is becoming dangerously close to causing persistent trade mark infringement.

However, as it stands, trade mark protection is not recognised in relation to AdWords. Registered trade mark owners have had varying degrees of success in enforcing their trade mark protection over the use of their mark as an AdWord by another party.

The current stand is that so as long as the advertiser makes it clear that the goods or services are originating from them and not the trade mark owner. They can fall under the ‘honesty’ defence to trade mark infringement.

You may think that your hands are tied as a trade mark owner if you find that someone is using your trade mark as a AdWord, and you may be right. However there are a number of steps you can take in order to get some kind of result.

You can make a complaint to Google if you believe there is suspected infringement. Google will only conduct a limited investigation to determine if there is any element of confusion. If so, they will remove the advert. If not, however, you are back to square one.

It is also important to ensure you are clear of your legal position. The Trademarkroom can consider your position and explain to you in a client friendly manner exactly where you stand.

It is not advised that you threaten the other party with a trade mark infringement without being clear of your position. You may find yourself on the receiving end of the unjustified threat claim from the third party.

For more information, contact The Trademarkroom today.

By Ellis Sweetenham