Your competitors are permitted to use your business name on Google to get your clients. Learn how to make sure they don’t!

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.