Can I bid on a Competitors Name…?
So you have been bidding on your competitor’s name as Google AdWords because “it’s what everyone does” … but is it legal?
We review the Australian trade mark laws, Australian consumer laws and Google’s trade mark policy to show you what you can and cannot do when bidding on your competitor’s name. Follow these rules to make sure you don’t get caught out!
Is it trade mark infringement if I bid on my competitor’s trade mark as a Google AdWord?
Right now the answer is no.
Section 120 of the Trade Marks Act 1995 (Cth) says a registered trade mark is infringed if it is “used as a trade mark”. Previous cases have defined “use as a trade mark” as use of the mark as a “badge of origin”. Putting aside the legal jargon, this means use of the trade mark to distinguish the goods or services of one person from the goods or services of others.
So the key question is – by bidding on your competitor’s registered trade mark are you using it “as a trade mark”?
Bidding on your competitor’s registered trade mark as Google AdWords to improve your rankings is not “use as a trade mark”. This is because you’re not using their trade mark to distinguish your goods and services from the goods and services of others.
In addition, the fact that Google AdWords are hidden and not visible to consumers means it is unlikely that consumers will be misled and deceived into believing your business is associated with your competitor’s business. As a result you would not be contravening the Australian consumer laws.
Does that mean I can use my competitor’s trade mark in the text of my Google advertisement?
The answer to this question depends on how you use your competitor’s trade mark in your Google advertisement.
For example, in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd  FCA 554, Cairns Luxury Apartments infringed Cairns Harbour Lights’ registered trade mark for the words “Harbour Lights” in the following Google advertisement:
The judge found trade mark infringement on the basis that the advertisement suggested Cairns Harbour Lights was offering the accommodation – this means it was use of the words to distinguish the goods and services offered – use of the words as a trade mark.
However, in the case Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd  FCAFC 75, Easy Living was not found guilty of trade mark infringement even though it used Lift Shop’s registered trade mark for “Lift Shop” in the following Google advertisement:
The judge found that Easy Living’s use of “Lift Shop” in this instance was not trade mark infringement because it was used “in a descriptive way”. It was used by Easy Living to show they are a “shop” that sells “lifts” and not to show that they are associated with Lift Shop.
In this case the judge also stated that it was unlikely that use of your competitor’s trade mark in a Google advertisement will contravene the Australian consumer laws because when a consumer clicks on your Google advertisement it leads them to your website. It is at this point that the consumer – if they were initially misled or deceived – is no longer misled or deceived into thinking your Google advertisement is for your competitor. That is, unless you’re using your competitor’s registered trade mark on your website in which case you are contravening the Australian consumer laws and trade mark laws.
Also, because your URL is displayed within your Google advertisement (see Easy Living’s Google advertisement above as an example) it is less likely that a consumer will be mislead or deceived into thinking the Google advertisement is for your competitor.
What does Google say about all this?
The use of your competitor’s trade mark as a Google Adword does not breach Google’s trade mark policy. In fact, since 23 April 2013 Google’s AdWords trade mark policy has stated “Google will not investigate or restrict the use of trademark terms in keywords, even if a trademark complaint is received”. This development was the result of the High Court’s decision in Google Inc v Australian Competition and Consumer Commission (2013) 294 ALR 404 where Google successfully argued against misleading and deceptive conduct claims relating to sponsored advertisements.
However, use of a competitor’s registered trade mark in the text of your Google advertisement will breach Google’s trade mark policy – but it will only be an issue if your competitor complains to Google, and all Google will do is restrict the use of your competitor’s trade mark within the advertisement or not allow the advertisement to run.
3 things to remember
- Right now you can legally bid on your competitor’s name as Google AdWords
- Whether your Google advertisement contravenes Australian trade mark and consumer laws will depend on how you use your competitors name in your advertisement.
- This area of law is ever evolving – call us for legal advice before you start to bid on your competitor’s name as Google AdWords.