In an article on mondaq.com, Karen Hayne, Melissa Corbutt and Ashleigh Fehrenbach analysed the ever-changing Australian legal stance on businesses associating themselves with other brands in their online marketing.

In particular, the article looked at the tactics employed by some businesses to use keywords containing competitors’ names in their sponsored link on Google Adwords, and the evolving laws around that practice.

The Australian competition and consumer commission (ACCC) challenged this action in 2013, taking Google to court, claiming they had engaged in misleading and deceptive conduct and were liable for the words advertisers chose in their Google Adwords campaigns.

Google claimed it was merely a tool for advertisers to promote their website and was not responsible for policing each individual’s choice of words.

During the case, the trial judge did find that a number of businesses falsely represented their company name with others, but Google itself did not make these representations, nor did they actively endorse the choices.

While the Full Court found Google had itself engaged in misleading and deceptive conduct, the decision was overturned on appeal.

The High Court determined that “Google has no control over a user’s choice of search terms or an advertiser’s choice of keywords” and should not be responsible for misleading or deceptive conduct of its customers, as the advertisements were predetermined by the advertisers, not Google.

Hayne, Corbutt and Fehrenbach looked at Google’s policy since the case. They found that, in the aftermath of the court case, Google amended its AdWords Trademark Policy accordingly.

Previously, if a trademark was being used as a Google Adword in Australia, trademark owners could file a Google Adword Complaint. Google could then take necessary action to restrict the offending link.

In its updated policy, “Google no longer restricts advertisers purchasing and using trade marks as keywords in Google Ads (formerly known as “sponsored links”). Google will now only restrict use if the trade marks are used and actually appear in the text of the resulting Google Ad.”

Now, trademark owners can complain to Google about unsolicited use of their name, but their scope for complaint is very narrow.

“For example, Google will:

• Only investigate claims where the trade mark is an exact match to the registered trade mark. Near matches to a trade mark will not be investigated. For example if your mark is “Two Left Feet Dance Company” and the mark you are complaining of is “Two Left Legs Dance Company”, your complaint is unlikely to be investigated;

• Not review claims where a trade mark is being used as a sub-domain. For example, if you own the domain name “twoleftfeet.com.au” and you lodge a complaint about the domain name “twoleftfeet.twoleftlegs.com.au”, this complaint is unlikely to be investigated.”

Further, a Google Ad may only be taken down temporarily. There have been cases where ads in question reappear on Google weeks later without explanation.

The article noted that, “while Google may permit businesses to bid on and use terms (including other traders’ trade marks), businesses must tread carefully when deciding what terms to use and how to use them online”.

They presented a number of disputes taken to court (see article) between businesses challenging the alleged use of their name in other businesses Adwords campaigns.

In conclusion of the article, Hayne, Corbutt and Fehrenbach stated:

“An issue left undetermined to date, is whether or not the bidding on key words by businesses which are registered trade marks of other brand owners, might in itself give rise to some form of infringing conduct or a threat to so engage.

The law in the area of online advertising will continue to evolve in Australia. The cases to date highlight some key issues for brand owners including when brands are chosen which include descriptive words. In these circumstances, stopping use by other traders in online advertisements (or otherwise) will be more difficult and without registered trade marks, perhaps impossible.”

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