Google’s new AdWords pol­i­cy means trade mark own­ers must be more proactive

In brief

From 23 April 2013, Google will no longer pre­vent users of its AdWords pro­gramme from using anoth­er par­ty’s reg­is­tered trade marks as key­words in Chi­na, Hong Kong, Macau, Tai­wan, Aus­tralia, New Zealand, South Korea, and Brazil. Whilst this brings Google’s AdWords pol­i­cy into line with oth­er juris­dic­tions world­wide, trade mark own­ers must now be even more vig­i­lant in mon­i­tor­ing the mar­ket, and in par­tic­u­lar the search engine opti­mi­sa­tion strate­gies of com­peti­tors to ensure that valu­able rights are not infringed or a com­pet­i­tive advan­tage lost.

Google has announced that it will allow the use of trade marks as key­words in its AdWords pro­gramme from 23 April 2013.

Google’s revised trade mark pol­i­cy for Chi­na, Hong Kong, Macau, Tai­wan, Aus­tralia, New Zealand, South Korea, and Brazil comes in the wake of the High Court deci­sion dis­cussed in our arti­cle last month Busi­ness Own­ers – Take Care When Buy­ing Spon­sored Links.

To recap, the High Court ulti­mate­ly found that Google had no respon­si­bil­i­ty for the terms users of its AdWords pro­gramme chose and that it is in fact users of the ser­vice (and not Google) who are liable for any rep­re­sen­ta­tions they make as a result of the use of AdWords search terms.

Under the revised pol­i­cy, Google will not inves­ti­gate the use of trade mark terms in key­words even if a trade mark com­plaint is received. This means that it will be even more impor­tant for a brand own­er to con­sid­er secur­ing its key brands or reg­is­tered trade marks as AdWords for its own goods and ser­vices, so as to pre­vent a com­peti­tor from doing so. With the removal of the cur­rent rel­a­tive­ly straight-for­ward pro­ce­dure of lodg­ing a com­plaint, and seek­ing removal of the com­plained term through Google, it will be incum­bent on trade mark own­ers to be much more proac­tive in secur­ing all key terms as pos­si­ble search terms.

It also makes a mar­ket or com­peti­tor mon­i­tor­ing pro­gram much more impor­tant as a tool for ensur­ing a brand or port­fo­lio is not dilut­ed or deval­ued by com­peti­tor activity.

From 23 April 2013, if a com­peti­tor does obtain anoth­er brand name or trade mark as a key word, it will be more dif­fi­cult, time con­sum­ing and expen­sive to stop any improp­er use. The only option (if the com­peti­tor is not pre­pared to give up the use of the term vol­un­tar­i­ly) is to take Court action against the com­peti­tor for trade mark infringe­ment or mis­lead­ing and decep­tive con­duct. This will be sig­nif­i­cant­ly more expen­sive and time con­sum­ing than the cur­rent Google com­plaints process.

If at the moment you are aware of any use of your brands or trade marks by com­peti­tors as part of AdWords you need to take action about that now, and before 23 April, in order to take advan­tage of the cur­rent process.