Companies advertising using Google's Adwords service need to consider whether they might be infringing the registered trade marks of their competitors.
Google's Adwords service allows advertisers to purchase 'keywords' which, when entered into the Google search bar by an internet user, direct the types of search results that are returned (for example, the 'sponsored links' that appear on a Google Results page).
In Australia, the use of a trade marked term as a keyword in the context of online advertising may constitute trade mark infringement where the use is combined with a clear representation of the common origin of the goods or services. A recent decision in the United Kingdom goes further than this, finding that the use of a registered trade mark as a keyword is itself sufficient for trade mark infringement. This may have an effect on the development of the law in Australia, and this issue should be treated with caution by advertisers.
Google's Adwords policy and trade marks
On 23 April 2013, Google changed its Adwords policy in Australia relating to the ability to purchase keywords that are the subject of a registered trade mark.[1] This change also affected China, Hong Kong, Macau, Taiwan, New Zealand, South Korea and Brazil. The same change in Google's Adwords policy was announced in the UK and Ireland in May 2008.
Before this change, Google's Adwords service allowed trade mark owners to lodge a complaint with Google where their registered trade mark had been used by a competitor, which triggered an internal review process by Google. In cases where trade marked terms had been used as keywords, the infringing advertisement was removed by Google. Following the change in its policy, Google will no longer prevent advertisers from purchasing and using trade marked terms as a keyword. Without Google restricting and monitoring the use of trade mark terms in this way, a claim of trade mark infringement against the advertiser is the avenue through which trade mark owners can now stop the use of their trade marks as keywords.
Establishing trade mark infringement in online advertising
In Australia, it does not appear that purchasing and using a keyword that is the subject of a registered trade mark would fall within 'use as a trade mark' for the purposes of establishing infringement under section 120 of the Trade Marks Act 1995 (Cth) (the Act). In Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd it was found that the use of a trade marked term as a meta tag was not sufficient, on its own, to constitute 'use' for the purposes of establishing trade mark infringement.[2] However, it appears that the use of trade marked terms as keywords, when combined with clear representations of similar origin of the goods or services (for example, as a banner on a website), will be sufficient for establishing infringement under the Act.[3] With Google no longer monitoring the use of trade marked terms in online advertising, the courts will have greater scope to hear disputes and influence the development of the law in this area.
A recent decision in the United Kingdom relates to an action brought against an advertiser following Google changing its Adwords policy there in 2008. In Marks & Spencer v Interflora [2013] EWHC 1291 (Ch), the High Court found that Marks & Spencer's (M&S) use of Interflora's trade mark as a Google keyword was an infringement of Interflora's trade mark. This case marks a significant development of the law in this area and, given that Google has just changed its policy regarding the use of trade marked terms as keywords in Australia, this case may have repercussions for advertising practices here.
Significant development in the UK: Marks & Spencer v Interflora
Following the announcement of change to Google's policy regarding keywords in the UK, M&S made a considered commercial decision to purchase Interflora-related keywords on Google for the purpose of diverting internet users to its own website. Interflora argued that this conduct infringed its registered trade marks.
In finding that the conduct of M&S had infringed Interflora's trade mark, Justice Arnold of the High Court (heavily influenced by statements from the European Court of Justice, where the case had been referred following its initial hearing in the UK), repeatedly stated that the use of a trade marked term as a keyword in online advertising was not conduct that was inevitably and inherently objectionable from a trade mark perspective. However, certain factors were relevant to the finding that M&S's conduct had infringed Interflora's trade marks. In particular, the following factors were significant:
- the nature of Interflora's business model. Justice Arnold discussed the uniqueness of Interflora's business model as being a significant factor in his decision. In particular, that Interflora's brand and business model is based around providing a network for florists in geographically dispersed areas made it more likely that consumers would be confused as to whether the advertised goods originated from Interflora or M&S. That an internet user would be likely to assume a connection or affiliation between Interflora and M&S Spencer by having an M&S advertisement appear as a Google search result for 'Interflora' was a determinative factor in this regard.
- the relevant consumer. In determining the effect of M&S's advertising, the relevant perspective was that of 'the reasonably well-informed and reasonably observant internet user', initially as at 6 May 2008. This user was considered not to understand the difference between organic and advertised search results, largely because of the relative lack of internet literacy in 2008. It was found that, even in 2013, a 'significant proportion' of internet users in the UK would not appreciate the difference between a natural search result and a paid advertisement. The onus was then placed on M&S to establish that the use of the Interflora's trademarks would not confuse the consumer (with the characteristics described by the Court). M&S was unable to do this, resulting in a finding of infringement.
Although certain factors that were significant to Justice Arnold's decision in Marks & Spencer v Interflora (as described above) may limit the ability of the decision to be applied more generally, the outcome in this case illustrates an important development in trade mark law. It is of particular importance as it is the first case to hear a dispute following the change in Google's Adwords policy internationally. Now that this change has been effected by Google in Australia, the approach of this case may be persuasive to courts here when hearing similar disputes, especially where online advertisers are seeking to take advantage of the change to Google's Adwords policy.
Companies still need to be careful that they don't mislead and deceive consumers in breach of the Competition and Consumer Act 2010 (Cth) by purchasing and using Adwords, irrespective of whether their conduct would amount to trade mark infringement under Australian law. See our analysis here of the High Court's decision in Google Inc v Australian Competition and Consumer Commission [2013] HCA 1, which included a discussion of the obligations on advertisers not to mislead consumers when using Google's Adwords service.
[1] See <https://support.google.com/adwordspolicy/answer/177578?hl=en&rd+1#>.
[2] [2011] FCA 1319 [57]-[62].
[3] See, eg, Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 [13]-[69].
0 comments:
Post a Comment