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Online advertising – protect your brand from competitors

02 Oct 2015

Topics

  • Intellectual Property

Businesses want their brands to be visible online, especially on a Google search engine results page (SERP). But efforts to build a reputable brand and to maximise exposure can be undermined when a competitor uses your brand to divert customers from your business to theirs.

How a competitor might use your brand online

Competitors can do this by using your brand name in their sponsored links such as Google AdWords. A sponsored link is one that a business pays for to have it included on a SERP for a particular keyword or search term.  Here are a few examples of how a sponsored link can be used against you.

Example 1:      Your competitor uses your trademark as a search term for its sponsored link

A competitor can nominate your business’ trademark as a keyword for its sponsored link so that when a customer searches for your business on Google, the SERP will include the competitor’s sponsored link in addition to organic search results such as your website.  As a result, the consumer will be exposed to your competitor despite actually searching for your brand.

Example 2:      Your competitor uses your trademark in the text of the sponsored link

Competitors can go one step further. The competitor’s sponsored link may contain your business’ trademark (or something similar) in the text of the link itself. A consumer seeking out your brand may be confused into thinking that your competitor is associated with your brand and follow the link.

Example 3:      Your competitor uses your trademark in the Display URL of the sponsored link

Another way that competitors could use your business’ trademark is in Display URLs.  The Display URL is the URL that consumers see beneath a sponsored link and may lead them to think that your competitor is linked to your business.

What can you do to battle this kind of ‘brand piggybacking’?

In limited situations you may lodge a complaint with Google and Google will investigate the complaint and restrict the competitor’s use of your trademark. You can find information about lodging a complaint here.

According to Google’s AdWords Trademark Policy, where the trademark is used without authorisation within the text of the sponsored link, Google will investigate and may restrict its use by a competitor. That is, Google may intervene in Example 2above. Importantly, you may make a complaint in relation to your trademark whether or not it is registered.

However, Google’s AdWords Trademark Policy says that it will not take action against competitors who use your trademark:

  1. in search terms or keywords of its sponsored link (Example 1 above); or
  2. in the Display URL of the sponsored link (Example 3 above).

Google’s trade mark policy in relation to AdWords can be found here.

Google has a number of other policies dealing with copyright violations, misrepresentation and other categories of infringement, which could be of assistance in these instances.

It may be that the only option left to you is to pursue the competitor directly. You may be able to prove that the competitor has:

  1. infringed on your registered trademark under the Trade Marks Act 1995 (Cth);
  2. breached the Australian Consumer Law by engaging in misleading and deceptive conduct; and/or
  3. committed a tort of passing off in relation to your unregistered trademark.

In order to prove infringement of your registered trademark, you must show that the competitor has used the trademark “as a trademark” (Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450).

If you can establish a legal claim against your competitor you may be entitled to an injunction stopping them from using your brand; damages for any loss caused by their actions and/or an account of profits.

What should you do now?

Businesses should carefully monitor how their trademark is being used online.  If a competitor is using your trademark in its Google AdWord campaigns, a first step may be to contact them directly and ask them to stop. If they ignore the request, you may investigate making a complaint to Google as this is a cheap way of stopping the conduct. However, if Google will not intervene, your only option may be to seek a remedy at law by establishing a cause of action.

Our experienced intellectual property team can provide further advice and assistance in this regard. Contact us today!