In the last decade there’ ve been more than 50 lawsuits regarding trademark infringement on Google Adwords. When I started as an entrepreneur, there was a great misunderstanding between keywords and Google ad words, which is the case even today. While jurisdiction in EU in relation to traditional keyword advertising have largely been settled, more complex and increasingly common types of search engine advertising, such as comparison-shopping ads, have largely escaped the attention of the courts. 

But, let’ s go back to the start

Search terms are the most basic element of Google (words, phrases that users enter into google to find a product or service). When consumers search terms on Google, they usually don’t know what specific keywords brands are targeting, they just write down the word and hope they will get what they are looking for. Marketers use search terms and queries to inform their keywords and make marketing strategy based on them. Key words are essentially the search terms sold by search engines to advertises, that represent the exact word or phrase a marketer is targeting and by which business is described best.

However, some search terms in keyword advertising programs are trademarked, and trademark owners have sued both the search engines that sell their trademarked terms and the advertisers that purchase them. The key issue, as with most trademark disputes, is whether consumers are confused. When consumer confusion is not found, the practice is permitted. Trademark owners claim that the usage of keywords that are in fact trademarks create confusion among consumers, however, keyword advertising trademark infringement arises only when the search engine links the actual words within trademark to a competitor, In other words, when online search engine companies sell trademarked words and phrases to competitors of the trademark owner.

One question that commonly arises in keyword advertising trademark infringement is what constitutes use. In the last decade, courts have held firm to the idea that buying another company’s trademarked words to use as a keyword in a search and/or trigger advertising constitutes use in commerce. But the plaintiff must still provide sufficient proof that the example of use in commerce caused confusion among consumers.

When deciding whether keyword advertising infringes on a trademark, courts look at four main points:

-The evidence of consumer confusion

-The trademark’s strength and recognition

-How the ad looks on the internet

-How carefully a potential buyer would consider information before making a purchase

 Google does not investigate or restrict keyword infringement in their policy, however if ad campaigns target the EU  and European free trade association regions the policy for trademarks in the text and keywords can apply.

GOOGLE ADWORDS

Google AdWords is an advertising tool that enables businesses to display ads in search results when users searches for a specific keyword.  There is this false understanding that on Google AdWords we pay for the keywords, but in reality we pay for search terms.

Using a phrase or word that is registered as a trademark is a common practice when targeting audiences. According to the European Court of Justice, providing a keyword that is identical or close to a registered trademark isn’t the same as using the trademark when doing business. CJEU ruled tha it shall be considered whether an average consumer may be confused by a sponsored link, particularly if a trademark is used neither in the text of an advertisement (i.e. sponsored link) nor on the advertiser’s website. However The current approach to the function of origin indication should be reviewed as it does not consider the nature of the use of trademarks in online search engines such as Google AdWords and the level of consumer awareness when it comes to web browsing and confusion. The question of whether Internet users can easily distinguish whether or not the competitor is part of the trademark’s proprietor network is relevant in assessing whether there is unfair advantage or dilution. Thus, the approach towards the use of trademarks in the digital environment should rather be more focused on the behaviour of the web users. As a result, the trademark holders’ competitors ought to be given more flexibility when structuring their e-marketing strategies.

The updated policy of Google Adwords reflects the ruling by the European Court of Justice, providing a form in which a trademark owner can submit dissatisfaction with the use of keywords protected under a trademark in Google Adwords. When including a trademark in the text of an advertisement, Google can look further into the matter and restrict the usage of a trademark in the ad. 

Exceptions exist in the following territoriess:

  • Canada
  • United States
  • Australia
  • United Kingdom
  • New Zealand

These exceptions allow for use of trademarks in the text of an ad in authorized ways, as well as on informational and reseller websites. The trademark is allowed to be used if components or the original product is the main option available on the main landing page.

AdWords and other paid search terms are so still and yet another challenge for trade mark owners to be alert to,  you don’t want to inadvertently build your online campaign around someone else’s trade mark. So, before you use any keyword or search term containing someone else’s trademark, be aware it might constitute infringement, but interent world and behaviour of users should be reviewed also from legal point of view, judgements should take into consideration also essential nature and purpose of internet, degree of knowledge of users and aim of providing as much commercial info to consumers as possible- with search engines that use names and descriptions that sometimes are also trademarks-balance is needed to be found.

https://www.jipitec.eu/issues/jipitec-7-1-2016/4395