Your competitors can use your business
name to advertise on Google, attract customers that
were looking for your name and your services, but when they click
on the link, it will get them to their website not
yours. We regularly have clients who face these
issues and there are legal ways to combat such a scenario.
What are Google ad words?
In a nutshell, Google ad words are an online advertising and
marketing tool. Businesses purchase a key word from Google which
ensures that their product or services appears as a result when a
Google search is conducted for a particular word. The adverts are
usually at the top, bottom or side of the results page and are
widely considered an effective way for businesses to market their
products and services online.
Your competitors can use your business name on their Google
Ad!
To acquire a Google ad word you do not have to demonstrate that
you are the business or individual mostly associated with that
word, or that you own a registered trade mark for that word. Google
ad words go to those who bid the highest regardless of their
association with the word. Up until 2008, businesses were not able
to purchase ad words associated with their competitor. This
prohibition was lifted in 2008 giving business the opportunity to
purchase a key word of a competitors' business.
This meant that businesses could find
themselves in a situation where their competitor owned an ad
word associated with their business, for example Asda could
purchase the word 'Tesco' and each time the word 'Tesco' is
searched, a link to Asda's website would appear as a result.
Indeed, this is precisely what M&S did when they purchased the
Google ad word 'Interflora'. This meant that whenever an internet
user searched the word 'Interflora' a link to M&S would appear.
Not surprisingly Interflora were aggrieved by this and issued
proceedings against M&S for trade mark infringement.
Is your competitor infringing your intellectual property?
The courts in this case considered whether the use of an ad word
associated with a competitor could amount to trade mark
infringement. In the M&S Vs Interflora case they found that it
did but that the purchasing of a Google ad word where someone else
holds the registered trade mark will not automatically amount to
trade mark infringement. Trade mark infringement or passing
off claim (when there is no registered trademark) will depend upon
a number of factors and in particular, whether the advert creates
confusion as to the who the advert is from.
Fair competition vs unfair advantage
Whilst in the eyes of the competitors the use of Google ad words
in this manner is a nothing but clever marketing and commercial
competition, for the business who has worked tirelessly to generate
such goodwill in particular words this can be rather frustrating
not to mention have a serious detrimental affect on the
business. There is a very thin line between using this as a
marketing tool to get your business in front of a competitors
audience, and confusing the public into thinking there is a
connection or association between the competing businesses to gain
an unfair advantage.
For your competitor to avoid a legal claim against them, their
advert should clearly demonstrate that it is a separate business
entirely and does nothing to tarnish your businesses' trade mark or
reputation. Where the businesses connection is not clear and could
be construed in a manner to suggest an association, whether this is
due to the advert itself or the arrangement and relationships of
the businesses, this will enable you to claim trade mark
infringement and potentially a passing off action (where no
registered trade mark exists).
So what does Google say about all that?
When you have a registered
trademark -
Google has implemented a policy in relation to ad words and trade
mark infringement. Where a business owns a registered trade mark
and a competitor purchases an ad word for that registered trade
mark, the trade mark owner may file a complaint to Google if they
consider this to be an infringement. Google will investigate this
and depending on the outcome of their investigation, will enforce
certain restrictions as set out in their policy.
When you do not have a registered
trademark - Where there is no registered trade mark
and a competitor purchases the ad word, Google
will not investigate a claim. Please
note that this is simply Google's policy and not the law!
Businesses will still have the option to issue proceedings in court
if an ad is used in a manner which could infringe a businesses
intellectual property rights, whether they have a trade mark (trade
mark infringement) or not (passing off) but it does show how
important a trademark is to a business.
What can you do?
If you are using ad
words - Make sure
that your advert clearly demonstrates that you are a competitor and
that you are not linked or anyway associated with the business
originally searched for. You should also consider what the public's
perception of your relationship with that competitor is to ensure
that there is no further risk of confusion.
If you are concerned a competitor might use an ad words
associated with your business-
Trademark Trademark
Trademark!
As mentioned above, Google's position is that they will only
investigate the matter if the infringed party has a registered
trade mark. Whilst owning a trade mark will not conclusively
stop a third party using an ad word, it is the best preventative
step you can take to reduce such risk. Trade mark protection is a
key way to ensure you can protect a particular word associated with
your brand and it removes the burdensome obligation of
demonstrating you have goodwill in that mark (as required when by
the law of passing off).
For more information about trade marks
click
here or contact Rebecca Murphy directly at rebecca.murphy@acumenbusinesslaw.co.uk or
on 01273 4470747.
SEO
Speak to a search engine optimisation expert and seek advice on
acquiring ad words;
Monitor your
competition
If acquiring trade marks or ad words are not financially
and commercially viable then monitoring the use of ad words to see
who owns them or is bidding on them will show if there is a risk
that your competitors may be thinking of marketing in this
manner;
Marketing activity
Increase your marketing presence to eliminate the risk of their
being any confusions between your business and that of
competitors.
If a competitor is using an ad words associated with
your business and there is confusion - Keep evidence
of any confusion that has existed and consider reporting this to
Google for them to investigate.
Google ad words and intellectual property infringement
is a complex area of law. Should you have any further questions
regarding this subject please feel free to contact Rebecca Murphy
directly rebecca.murphy@acumenbusinesslaw.co.uk or
on 01273 447074.