This article on ‘Does Google AdWords infringe Trademarks?‘ was written by Samar Jain an intern at Legal Upanishad.
A trademark is a type of Intellectual Property Right(IPR), Intellectual Property is a form of property that cannot be touched or seen but has the characteristic of being felt and hence intangible. On the other hand, a tangible form of property is that property that can be felt, seen, and touched. The Rights which are connected with Intellectual Property are known as Intellectual Property Rights(IPR). Google AdWords also known as Google Advertisements is a form of advertisement wherein keywords are utilized. Once the keyword has been entered, it lands the user on a page where the related products and services are offered.
Google AdWords and Trademark
Google Ads/AdWords is a platform in an online format which is developed by google where promoters offer to exhibit concise ads, services offered, and listing of various products or videos to the users of the web. The ads usually are placed on the results obtained via the Search Engines and also via non-search methods like videos, mobile applications, and websites. These services are offered using the Pay Per Click Pricing model. It is through the medium of Google Ads that Alphabet Incorporation (The Parent Company of Google) earns its major revenue.
The system of Google Ads is based upon two things: It is partly dependent upon the usage of Cookies and partly dependent upon the advertisers. These things are used by google to place ads on those pages it might think are appropriate and pertinent. The Advertisers pay when the user gets diverted to the advertising and clicks on it. The Advertisements can be implemented either at the Local/National/ International Level.
The status of an advertisement as regards its Family Status is determined by an assessor and is indicative of who is the appropriate target audience. The implication of this is that it affects the appearance of an advertisement about when, where, and in which country.
Over time, restrictions on the advertisements for the sale of hard alcohol and liquor have decreased. There are some absolute restrictions on the advertisement of some keywords such as Hacking. In June 2007, there came a landmark decision where Google AdWords concerning student essay writing services was banned. Google has keywords that are prohibited and differ from the type of prohibition and country.
A trademark is a visual symbol in the form of a word, device, or label applied to articles of commerce to indicate to the purchasing public that they are goods manufactured or otherwise dealt by a particular person as distinguished from similar goods manufactured or dealt by other persons. The unique feature of the term of protection of trademark is that the protection is granted for perpetuity. It is initially granted for a term of 10 years and then it is renewed after a fixed period and thus used for an indefinite period unless there is a court order prohibiting the same or it has been removed from the register of trademarks.
Google AdWords and Trademark Infringement
Google has time and again been criticised for allowing advertisers using AdWords to offer services on the trademarked words. It all began in 2004 when google allowed in the United States and Canada advertisers to offer a wide variety of search terms which also includes using trademarks of their competitors. Later on, in 2008 this service was expanded to include the United Kingdom and Ireland. Advertisers are ideally restricted from the usage of trademarks of other companies when they are advertising if the trademark has been registered with Google’s Advertising Legal Support Team.
In 2010, Google was again in the news of a suit of trademark infringement that involved 3 companies of French Origin that owned the Trademarks of Louis Vuitton. The main question was whether google was to be held responsible for the trademark infringement that the advertisers had purchased keywords or not. It was finally ruled that the European Trademarks Laws were not breached and the breach will depend upon a case-to-case basis.
In 2013, the Tenth Circuit Court of Appeals held Lens.com to be not violative of trademark infringement when it had purchased the AdWords and other search advertisements of its competitors 1-800 Contacts registered trademark at the federal level when it purchased the keyword in the case of 1-800 Contacts Inc vs Lens.com Inc. Over the years Google by letting advertisers buy keywords that are registered trademarks has indeed committed trademark infringement. However, it is done in such a manner that when a court case is filed against google, google is acquitted of any wrongdoings.
However, the methodology it uses is a bad practice as it directly reduces the business of the competitors as the normal public is not expected to know what words are trademarked and by whom. So quite naturally, if an advertisement is put in front of the public when it streams on the internet, it will naturally be attracted to that advertisement. The usage of Cookies is also integral to the same and thus Google does infringe on Trademarks.
Keyword advertising using search engines through keyword research is the most common method employed by businesses to increase their internet existence. The issue arises when a trademark that is registered is used as a keyword by an intermediary to provide linkage to its website to promote its goods and services.
What happens is that it confuses the minds of the consumers as to who is the genuine manufacturer of the goods and services offered and who is not. This defeats the whole purpose of obtaining a trademark for goods and services. It is often said by the holders of the trademark that letting a competitor use their trademark as a keyword lets the competitor obtain an unfair, unjustified advantage over the actual trademark holder.
As per the European Union(EU) Court of Justice, there exists a difference between providing a keyword that is closely related to the trademark which is already registered for advertisement, and usage of a trademark when doing business. The Court had also ruled that this methodology is not violative of The TM Directive 1989. This statute was later replaced by The TM Directive 2008.
However, Google has updated its policy on AdWords based on the rulings of the European Court of Justice. It now provides a form through which the owner of a trademark who is dissatisfied with the protected keywords can submit the same to google. Google through this mechanism helps to restrict the use of a trademark for advertising.
However, there are certain exceptions for the same, and are as follows:
- New Zealand
- United Kingdom
- United States.
The exception lets the trademark be used for advertisements in an official, sanctioned, lawful manner on the reseller and informational websites. The trademark for advertising will be allowed to be used if the products listed in the ad are the same products that are available on the same landing page. If the trademark owner has authorized the usage of his trademark through the submission of Google’s form of authorization, it can be used in other advertisements as well.
With the rise in the volume of business and transactions which happen on Google, it has developed stringent policies for advertising, which if not followed face legal action.
The policies are as follows:
- Content that is Prohibited.
- Practices that are Prohibited.
- Content and Features which are Restricted.
- Content of Editorial and Technical Standards.
The most up-to-date example of trademark infringement for advertisement is the case of the MakeMyTrip vs Booking.com trademark. In this case, it was contented by MakeMyTrip that whenever someone searched for its company on Google, the first link which was shown was Booking.com. Upon revision, it was found that Booking.com was using the trademark of MakeMyTrip for the promotion of its brand.
Booking.com used this technique to quickly establish itself and gain a reputation at the expense of MakeMyTrip as the latter is already a well-established name in the travel booking space in India.
The result of the lawsuit was that Booking.com is now forbidden from the usage of the trademark of MakeMyTrip as a keyword in Google Advertisements. This has not only affected Booking.com financially but has also affected its reputation and image. This decision has set a strong precedent and will help to discourage other businesses to use brand names or trademarks to gain popularity among consumers.
Finally, it can be said that there are no two opinions on the fact that the usage of keywords for advertising is an effective mechanism and tool for e-advertising as it helps target consumers and customers in real time. However, it is also worth knowing that advertising through keywords and infringement of a trademark is a concept that is still in its nascent stage. Hence there are no specific rules and regulations which govern advertising through keywords.
Some measures are available to the party who has infringed the trademark using keywords such as proving that sufficient measures have been taken to avoid confusion. There is a famous saying that with great power comes much greater responsibility. Today google is the guardian and has the responsibility of safeguarding the millions of people who transact through google.
Google today has realized after its multiple lawsuits that even it can be held accountable although it is just an intermediary. It is important for the advertisers that use google that while Google Advertisements are helpful for the growth and promotion of their brand, they must also keep in mind that failure to abide by google policies will lead to court cases that go on and on for months. Thus while using Google Ads for brand promotion be sure to pay attention to its policies and how will they affect you.
List of References
- Google AdWords, India, available at: https://en.wikipedia.org/wiki/Google_Ads#cite_note-6 (Last Modified October 30, 2022)
- Use of a Trademark as a Keyword on Google Ad Infringement or Not, India, available at: https://www.mondaq.com/india/trademark/1192864/use-of-a-trademark-as-a-keyword-on-google-ad-program-infringement-or-not (Last Visited on October 30, 2022)
- Google AdWords and Trademark Infringement, India, available at: https://www.upcounsel.com/google-adwords-trademark-infringement (Last Visited on October 30, 2022)
- Google AdWords and Trademark Infringement, India, available at: https://www.thehindubusinessline.com/business-laws/google-ads-and-trademark-infringement/article65488108.ece (Last Visited on October 30, 2022)