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Protecting your Trademarks on Google
 

by Matt O'Brien on May 30, 2013

Earlier this month the high court ruled in the long running Google Adwords case between Marks & Spencer and Interflora. The case centred on Marks & Spencer using Interflora trademarks as keywords in their Google Adwords campaign. The high court ruled in favour of Interflora.

What does this ruling mean for your business, its’ trademarks and how you use Google Adwords?

 

The past

Historically, Google prevented any advertiser from bidding on a businesses trademark as a keyword, it also prevented the use of trademarks within adverts. 

This changed in 2008, with Google allowing any advertiser to bid on any keyword, trademarks included. Google cited wider consumer choice as the driving rational behind this change. Trademarks continued to be prevented from inclusion in adverts by Google.

Following this change a number of businesses asserted that other advertisers should not bid on their trademarks, claiming this would be an infringement of their intellectual property. At this time this remained untested in a legal environment.

The first Adwords trademark infringement case was brought before the courts in 2008 by Interflora, against Marks & Spencer for use of their trademarks as keywords.

 

The present

A five year legal battle was fought, with the eventual outcome being in favour of Interflora, setting legal precedence in favour of the trademark owner.

The Google trademark keyword policy remains the same and is listed as; Google will not investigate or restrict the use of trademark terms in keywords, even if a trademark complaint is received.

So what does this mean if you own a trademark or run a Google Adwords campaign?

 

For the trademark owner

If you are the owner of a trademark then you need to police its use on Google Adwords. The easiest way to do this is to search for your trademarked term and take note of whether or not any advertiser is featured against them.

If an advertiser is featured against your trademark, do you want them there? If they are a reseller of your product, then the answer is probably yes, if they are a direct competitor, then probably no.

Google will offer no support in preventing these advertisers from bidding on your trademarks, so it will be down to you to remedy this. Google will however prevent an advertiser using your trademark in their advert, so if this is also happening you will need to fill in a simple form and supply it to Google.

A first port of call to stop an advertiser featuring against your trademarks is to ask them to stop. There is every opportunity that their advert might be triggered against a consumer searching for your trademark by a broad or phrase match keyword and that their advert has been triggered without malicious intent. Requesting that the advertiser add your trademark as a negative keyword to their campaign might be enough to prevent this happening again in the future.

If the infringement continues or if the advertiser is deliberately targeting your trademark as a keyword, then the precedence set in the Inteflora v. Marks & Spencer case adds significant legal weight to any solicitors cease and desist letter.

 

For the Adwords advertiser

If you are running an Adwords campaign you need to give careful consideration to the use of trademarks that you do not own as keywords in your campaign.

If you are a reseller of the trademark owners product, then there is a genuine reason to bid on the trademark and also for the inclusion on the trademark within an advert. An exception may be required from the trademark owner to allow use within an advert, as this is an area still policed by Google.

If you were a competitor of the trademark owner, then in light of the Interflora v. Marks & Spencer trademark ruling, bidding on the trademark would be highly inadvisable and could end up with an expensive legal bill.

If you are unsure whether or not your adverts are triggered competitor brand names or trademarks then it might be time to seek some independent advice on this and potentially other elements of your campaign. 

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