Google announces important change to Adwords trade mark policy
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Google is allowing companies to use a rival's trade marks as keywords to trigger search
adverts in all European Countries.
What it's about?
Google's "AdWords" paid referencing service allows advertisers to bid on keywords which are not
allocated exclusively and which include trade marks. When a user types in the keyword to Google's
search engine, this generates two types of search results: "sponsored links" which appear on the top
or right hand corner of the screen, and "natural" or normal search results. Advertisers pay Google on
a cost per click basis every time a user clicks on the sponsored link.
On 4th August 2010, Google announced an important change to its AdWords trade mark policy.
From 14th September 2010, Google is to allow companies to use competitor's trade marks as
keywords to trigger search adverts in all European countries. This will bring the rest of Europe in line
with Google's Adwords policy in the US, UK, Ireland and a number of other countries.
What do the changes mean?
Under its previous policy, in all EU countries other than the UK and Ireland, Google acted on
complaints that the use of a trade mark as a keyword was an infringement of trade mark law. From
14th September 2010, although companies can complain about the selection of their trade marks by
competitors, Google will only act on the complaint if, after conducting a limited investigation, it finds
that a specific advert text is produced which confuses users about the origin of the advertised goods
and services. Google will not however prevent the use of trade marks as keywords in the European
Union.
This policy change, permitting competitive AdWord bids from rivals throughout Europe, is likely to
result in brand owners incurring greater expense to show adverts relating to their own products.
The position of Google
The policy change by Google has been introduced following its recent success before the European
Court of Justice in joined cases C-236/08 to C-238/08 Google France SARL v Louis Vuitton Malletier
SA and other
http://www.addleshawgoddard.com/cdc/asset_store/document/google_article_27_04_10_73658.doc.
The CJEU (or ECJ) ruled that whilst some adverts might infringe a competitor's trade mark by creating
confusion about what company was behind the advert, the Google AdWords system itself did not.
The position in the UK
The position under UK law in relation to the use of a trade mark as a keyword is still unclear, pending
the High Court's decision in the case of Interflora Inc and another v Marks and Spencer plc and
another [2010]
http://www.addleshawgoddard.com/cdc/asset_store/document/coming_up_roses_165216.dochttp://w
ww.addleshawgoddard.com/cdc/asset_store/document/coming_up_roses_165216.doc. The High
Court has submitted a number of questions to the CJEU seeking further clarity in this area. Notably,
in the Louis Vuitton case, the CJEU gave very little guidance on what circumstances would amount to
trade mark infringement on the part of an advertiser.
Other Changes
In a separate but related change to its UK AdWords policy, from 14 September 2010, Google will
allow advertisers to use third-party trade marks in their adverts, regardless of whether they own them
or have consent from the trade mark owner. These changes will not be universally applicable to all
advertisers but will affect a significant section of the online advertising industry: Resellers of goods or
components, replacement or compatible parts and review sites.
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Now what?
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This controversial policy change by Google is likely to result in a number of EU and national
court rulings testing its interpretation.
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Both the CJEU ruling and High Court decision in the Interflora case are eagerly awaited with a
view to bringing further clarity of the position of brand owners and advertisers in relation to the
Google AdWords policy.

Exercise caution: EU and national courts may in certain circumstances find that use of a third
party's trade mark in the text of the sponsored advert amounts to trade mark infringement or
passing off.

Advertisers wishing to bid on competitors' key words should continue to ensure that the
sponsored link advert makes it immediately apparent that there is no economic connection
with the trade mark owner.
This article was first circulated on 6 August 2010 as an IP Brief E – Alert.
For further information on this or any other IP related matter please contact Asima Rana on 0161 934
6543
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