Brand owners beware: Google's new policy calls for increased vigilance

Google is set to relax its policy in relation to the unauthorised use of third party trade marks from September 2010. This relaxation of policy is a direct result of Google being found 'not guilty' of trade mark infringement in one of this year's most eagerly anticipated judgments. We look at how Google's new policy will affect businesses who find their trade marks and brand names being used in other businesses' Adwords campaigns.

Louis Vuitton v Google

Google's Adwords service allows advertisers to bid to purchase search words, so that their adverts are displayed next to the 'natural' search results of the term.

Earlier this year, Google successfully defended significant claims brought by luxury goods company, Louis Vuitton. Louis Vuitton forms part of the international LVMH group, which incorporates over 50 luxury brands including names such as Christian Dior, Krug and De Beers. The group had been involved in a long running legal battle with Google. Google allowed other businesses, who had successfully bid, to use the Louis Vuitton brand name as an 'Adword'. This meant that the successful business was able to use the Louis Vuitton brand names as keywords to trigger a result which brought up their own business.

The ECJ have now ruled that Google are not infringing trade mark law by offering keywords which correspond to trade marks for sale to potential competitors of the right's holder. Brand owners will now have to be far more savvy if they are to successfully protect their brand.

Google's new policy

Google will now ignore complaints in continental Europe that Google advertisers are using third party trade marks as Google Adwords, unless the sponsored links are confusing. This means that Google will only investigate a complaint by a trade mark owner if the owner complains that a sponsored link does not allow the average internet user to easily determine whether the goods promoted on the sponsored link site are the goods of the trade mark owner. If necessary, Google will then remove the advertisement. If an advertiser has a link which confuses users as to the origin of the goods advertised, that advertiser (but not Google) could be liable for trade mark infringement.

In the UK and Ireland, Google will now allow resellers of branded goods and suppliers of components / replacement parts to use third party trade marks in the text of their sponsored links.

Implications for businesses

Brand owners are likely to see an increase in their trade marks and brand names being used as Google Adwords. Brand owners should concentrate on reviewing the text of the sponsored link to see if the link, or the website, is confusing as to the origin of the goods advertised for sale. If Google ignores a complaint from a brand owner, the brand owner may have to commence legal proceedings against the advertiser. Google's policy is likely to further weaken the ability of brand owners to control how others portray their branded goods online. Brand owners beware...

Top tips for brand protection online

• Make sure that Adwords which you buy do not infringe another party's trade mark
• Brand owners may now need to pursue infringing advertisers directly - Google's remit has been significantly reduced
• Regularly search for your brand name on search engines - if it is being misused, consider most appropriate action in a timely way. This may include legal proceedings

For further information on the issues raised in this article, please contact Rem Noormohamed, Partner and Head of Technology, Media & Communications at Michelmores, at rehman.noormohamed@michelmores.com.