If somebody had said that to you twenty years ago, you would have told them to take the medication. And, if you’ve ever tried to wrap your head around 21st-century internet advertising, you probably felt like you might need the prescription too. When a business pays a search engine hard cash to feature its ad and website link beside the results of specific internet searches, based on the words used in those search requests, what happens, and what can you do to stop other businesses from using your name in their search engine ad?
Recently, there has been a big case on this topic in the Federal Court of Australia.1 A business ran paid ads on a search engine and used another business’s name amongst its keywords and in the headings of the ads. If you haven’t yet dipped your toe into internet marketing, ‘keywords’ are the keywords or phrases in the search that will prompt the search engine to display your ad next to the organic search results.
Can a competitor use my business name in their Google Ads campaign?
In deciding whether to undertake paid Internet listings using the business name of a competitor, bear in mind the result of a recent Federal Court case, where the Court found that the advertiser had engaged in illegal conduct, one because of its paid keyword campaign:
- infringed the registered trademark of the complainant by using in its AdWords campaign a sign “substantially identical with, or deceptively similar” to the registered trademarks of the complainant, on services covered by the registration;
- was misleading and deceptive conduct in breach of the Australian Consumer Law2; and
- Misrepresented that there existed an affiliation between the advertiser and the business of the registered trademark owner, also in breach of the Australian Consumer Law3.
However, the Court tried to distinguish honestly comparing your business with another business and trying to suggest some connection with another company. This article can provide a general guide for the use of sponsored link advertising, but be aware that this is an evolving area of the law.
So if you are selling potato chips, some of your keywords would be ‘potato’, ‘chips’, ‘crisps’, ‘crunchy snack’ and so on. But what about if you are a chip maker who is not Smith’s Crisps, and you include ‘Smith’s’ as a keyword? The Federal Court said that wasn’t a breach of trademark because the keywords are not visible to users and are not exclusive to one advertiser. So the chipmaker can put ‘Smith’s’ in their keywords.
However, it’s not just keywords that are at issue here. The ads’ wording also pops up next to the search results. So, imagine that a searcher has put in ‘Smith’s Crisps’ and you have won the weird auction or lottery which search engines conduct to decide which paid advertiser is offering the most money to place their ad next to the search results. The searcher gets a list of websites, with the Smith’s Crisps website at the top, of course, and right next to that list, your ad appears.
Can your ad say ‘Yummy Chips are better than Smith’s Crisps’? Well, it can because it is offering a substitute crisp. But if it said something like ‘Yummy Chips, the Smith St Crisp’ because the factory was in Smith St, or used ‘Smith’s Crisps Lovers’ as a headline, that would be too close to the Smith’s registered trademark and would also potentially mislead consumers. It would be a breach of Smith’s trademark under the Trade Marks Act 1995 and a breach of the Australian Consumer Law because it is misleading or deceptive.
What should you do if someone uses your business name in Google Ad Keywords or headings?
You should immediately-
- Complain with Google. Use GoogleAds ‘Complaints- Trademark Violation’ form if you have a registered trademark. If you don’t, use GoogleAds’ ‘Complaints’ form, which you can get online.
- Please write to the advertiser business and ask them to stop using your business name or product name as a keyword or heading.
- If the advertiser business doesn’t respond promptly, contact us for advice and action on the matter. We could apply to a court for an injunction for you if the issue is urgent.
Likely, you won’t get much joy from Google, as their terms and conditions for advertisers make it the advertiser’s responsibility to comply with the law. Plus, Google has not been liable in Australia for what is accessed through its search engine due to a significant High Court case. 4
This position may change over time, in other cases based on different circumstances, such as in the Milorad Trkulja case still being determined by the High Court against Google for accessorial liability for defamation resulting from images wrongly linking a person to a crime. Or new legislation may come in, undercutting so-called ‘service provider immunity’, following new laws in the USA and the European Union.
Google set up a separate channel for complaints about violations of registered trademarks in 2016. Only time will tell if that makes complaints more effective for trademark owners. Even if you don’t have much faith in Google, you should still complain promptly so that it’s on record in case Google ignores you and there is legal action down the track.
If you find your business impacted by a competitor using your business name as a keyword search on Google AdWords, don’t hesitate to contact us for a confidential and initial no-obligation initial discussion.
- Veda Advantage Limited v Malouf Group Enterprises Pty Limited, 2016, Judge Katzmann, Federal Court of Australia.
- Section 18 of the Australian Consumer Law is contained in Schedule 2 of the Competition and Consumer Act 2010.
- Section 29(1) (h) of the Australian Consumer Law.
- Google Inc v Australian Competition and Consumer Commission  HCA 1 (6 February 2013).