Advertisers may use trademark terms as keywords or in the ad text on Google Ads. However, if using a trademark in an ad causes confusion or weakens its uniqueness, it may result in legal action for trademark infringement.
Google ads advertisers bid on keywords, including trademarked terms, to have their ads displayed when users search for those terms on Google. This has led to various legal disputes over the years, as trademark owners have sometimes taken issue with their trademarks being used by competitors or other parties in paid search advertising.
The legal framework for the use of trademarks in online advertising can vary by jurisdiction and is subject to interpretation by courts. As per Google’s policy, “Google does not allow any third party to put /publish/refer to a Trademark of an owner in the Adtext /Adtitle.”
In November 2021, the Delhi High Court delivered a judgement on the same where “Agrawal Packers & Movers” had its trademark being used by a third party. It says:
- Uses of the trademark and its variations should be investigated if they result in the diversion of traffic from the owner’s website to the advertiser.
- investigate and review to be done of the overall effect of an Ad to ascertain that the same is not infringing
- if the effect of infringing is found, the owner can restrain the advertiser from using the same and remove/block such advertisements
These above statements were subjected to the final determination of the suit.
Points to be taken from the recent judgement
This issue again emanated when DRS Logistics Pvt. filed a complaint stating:-
“When someone searches for “Agarwal Packers and Movers” on Google, they encounter websites of rival companies. The search engine’s advertising mechanism leverages the trademark to divert online visitors to the competitor’s site. In response, the company pursued a court order to halt the utilization of its trademark as a keyword or meta tag, alongside other appeals.“
This according to them was a violation of the notice which was addressed to the respondents/alleged contemnors on 29th November, 2021.
Once again on14th December 2021, the applicants/pleader found that the respondents/alleged contemnors continued to permit third parties to use “AGARWAL PACKERS & MOVERS‟ and “AGGARWAL PACKERS & MOVERS‟ as a keyword/meta tag/trade mark.
Here are the key findings of the judgment:
1. Issue a directive for immediate and complete adherence to the order dated October 30, 2021, by the parties in contempt.
2. Issue an order declaring the individuals in contempt of court for deliberately disobeying the order issued by this respected court as the judgment dated 30th October 2021 was very clear that the defendants/alleged contemnors could not use the trade mark of the applicants or bond their name
3. The court disapproved of the double standards of Google in trying to seek to use the keywords formed of the trade mark of entities while not doing so in the European Union.
4. The Delhi High Court has held that Google should actively remove ads that infringe upon trademarks.
5. The judges rejected Google’s claim, stating that the tech giant suggests keywords to advertisers, even those that contain their competitors’ trademarks. The judges pointed to the Keyword Planner Tool as evidence, noting that it allows users to see their rivals’ trademarks. As a result, the court emphasized that Google makes a significant profit from the sale of keywords.
6. The appeals court affirmed the lower court’s order, requiring Google to investigate DRS’s complaints and remove any ads that infringe on the company’s trademark.
7. Google is required to conduct an examination and assessment of the overall influence of an ad, specifically to determine if any portion of the ad includes any content that violates the trademark.
8. Google’s use of trademarks as keywords is considered advertising under the Trademarks Act. The court also agrees with the lower court’s finding that Google would not be eligible for safe harbor protection under Section 79(1) of the IT Act if it is found to have infringed the pleader’s trademark or is contributorily liable for the same.
9. The court found that there is nothing illegal about Google using trademarks as keywords for displaying advertisements, as long as there is no confusion that the links or ads displayed are not associated with or related to the pleader.
What should advertisers do?
Below are a few considerations that advertisers should bear in mind when utilizing keywords or trademarks belonging to their competitors.
1. You need to ensure that you do not use any of your competitors’ trademarks in your ad copies
2. If you are using your competitor’s keywords, you should never use a BCI ad because it will directly use the competitor’s name in your ad copy and this will potentially expose you to legal complications.
3. While keywords are currently permissible, it is advisable to thoroughly evaluate them before deciding to bid on them. Instead of directly bidding on your competitor’s keywords, you might consider a more cautious approach by bidding on terms like “competitor alternatives” or “competitor-reviewed. This way, your product could appear when individuals are seeking substitutes or options related to that specific product. However, it’s essential to avoid mentioning the competitor’s name in your ad text, both directly and indirectly, even when utilizing the cautious approach.
It’s advisable to review local legal precedents regarding the usage of trademarks and keywords specific to your region, as regulations tend to vary across different countries. Thus, it’s important to exercise caution when incorporating competitors’ trademarks within Google ads.