Change is certainly in the air at Google. Turns out that while we were busy lamenting the loss of our beloved Google Reader, the folks over at Google were equally busy revising the AdWords trade mark policy in Australia. Here is what you need to know.
The changes apply to Australia, New Zealand, China, Macau, Hong Kong, South Korea, Taiwan and Brazil, and bring these countries in line with Google’s trade mark policy in the rest of the world.
Google has stated that its ‘goal is to provide our users with the most relevant information, whether from search results or advertisements, and we believe users benefit from having more choice. Our policy aims to balance the interests of users, advertisers, and trade mark owners.’
Interestingly, Google’s decision to introduce a global uniform trade mark policy closely follows the High Court’s decision in Google Inc v ACCC  HCA 1 (you can read our thoughts on that case here). Although that case did not concern trade marks, the High Court noted that Google is only a means of communication between advertisers and consumers. It was advertisers themselves, and not Google, who were found to have engaged in unlawful conduct in relation to the content of sponsored advertisements displayed by Google.
What does it mean for advertisers?
Google’s new policy does not equate to legal support for use of a competitor’s trade mark as a keyword in advertisements in Australia. At this stage, such use of a trade mark has yet to be legally tested. For trade mark infringement to be established, an advertiser must use their competitor’s mark(s) ‘as a trade mark’. Use ‘as a trade mark’ is use of a mark as a ‘badge of origin’, i.e. as a sign used to indicate the source of goods or services. The invisible use of an innocent advertiser’s names, brands and slogans that results in the mere display of paid search results that include the offending advertiser’s headline, text and domain name may not be sufficient to establish trade mark infringement.
However, use of a competitor’s trade mark in this way may be an infringement of the Australian Consumer Law (now at schedule 2 of the Australian Competition and Consumer Act 2010 (Cth) (Act)) and Passing Off under common law if the display of the sponsored advertisement suggests an association or connection between two brands where no such connection exists. Section 18 of Schedule 2 of the Act (previously section 52 of the Trade Practices Act 1974 (Cth)) provides that a corporation must not engage in conduct that is misleading or deceptive or likely to mislead or deceive. Section 29 of Schedule 2 of the Act (previously section 53) prohibits a corporation from falsely representing that goods or services or the corporation promoting the goods or services have sponsorship, approval or affiliation that they do not have.
Therefore, to avoid potentially unlawful conduct, advertisers should refrain from using a competitor’s trade mark when specifying their advertisement’s headline, text and keywords. As demonstrated by Google Inc v ACCC  HCA 1, advertisers themselves will continue to be held accountable for the content of their advertisements.