April 2013: Google changed its Trademark Adwords policy so that it no longer restricted its advertisers from purchasing and using trade marks as keywords in Google Ads (not shown in the ad itself). This followed a High Court decision that Google would not be responsible for third party ad content.
21 March 2016: The Federal Court decision in Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd(1) held that purchasing a competitor’s trade mark for key word use is not trade mark infringement, and certainly underlined Google’s 2013 policy change. Some within the IP community were concerned, though, that businesses can effectively ‘benefit’ from the reputation held in their competitors’ trade marks and essentially ‘direct’ traffic away from their sites.
7 April 2017: This most recent Federal Court decision, Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,(2) held that the use of a competitor’s registered trade mark in a website’s source code is infringing. Again, a seemingly odd decision because the metadata is really not visible, except to card-carrying geeks, of course.
So what do you need to know?
- You can still purchase and use a competitor’s registered trade mark as a Google AdWord, and not be liable for trade mark infringement – however, you still can not use the trade mark in the Google Ad itself (visible in text) or on the linked website.
- You could be potentially liable for trade mark infringement if you use your competitor’s registered trade mark within your website’s source code – unless the trade mark is being used in a descriptive sense (it will most likely already be a descriptive trade mark) or you can somehow demonstrate you are not using the brand as a ‘trade mark’, i.e. not as a badge of origin.
- As a trade mark owner you can still take action if your trade mark appears in the text of a competitor’s ad and/or if the ad misleads or deceives the public that if they click on your competitor’s ad they will be taken to your website.
- A competitor’s trade mark could be used for comparison purposes visibly on your website but you must approach this very carefully – professional IP help should be sought.
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- Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd  FCA 255.
- Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd  FCAFC 56.
Please note: none of the above is legal advice.