One practice that ad- and search-giant Google engages in that makes some folks happy and many others not so happy is allowing advertisers to purchase keywords that contain the trademarks of competitors. In an ongoing case in Europe, several companies are suing Google over this very same practice. For example, knockoff fashion companies can use Louis Vuitton’s trademarked terms as keywords, allowing their imitation products to be found alongside the original items.
Recently advisor to the European Union and Advocate General Poiares Maduro determined that in this particular case, trademarks are being used internally by AdWords and thus only of concern to Google and the advertisers. Nothing with these trademarked terms is actually being sold to the public, so there’s no infringement. Maduro is of the opinion that consumers understand that more sites than just the trademark owner will appear in results and that they can assess “the origin of the goods or services advertised based on the content of the ad and by visiting the advertised sites.”
Maduro did say that Google may be liable if trademarked content (rather than keywords) is found in an AdWords ad. The European Court is continuing to review the case, and Maduro’s advice is being strongly considered but is not legally binding. So while it may seem like a win for Google and a loss for trademark owners, it’s but one round in a series of long-running court battles.
Misuse of Trademarks in Different Countries
Because there are so many court cases being argued in many countries, it can be difficult to nail down what Google will and won’t do when it comes to trademark infringement. Your ability to fight off a competitive AdWord user may depend on what country you conduct business in.
In more than 100 countries, including the United States, Canada, and Mexico, Google won’t investigate misuse of trademarks used as keywords. (See the complete list of regions here). So the phrase “Tim Horton’s donuts” could ostensibly be used as a keyword by a competitive donut chain with no repercussions from Google within Canada.
However in those same regions, Google will investigate the use of trademarked terms in the actual text of the ad. That means the rival donut-maker could use “Tim Horton” as a keyword but not state “We serve Tim Horton donuts” in the text displayed in the ad. (A few dozen countries — including France, where the EU legal issues originated — have the privilege of both keyword and text investigation.)
In the United States, Google does recognize the following legitimate uses of trademarked terms within ad text by nontrademark owners.
- Resellers of trademarked goods or services
- Sellers of components, replacement parts, or compatible products of the trademarked product
- Noncompetitive, informational sites
You may also think an advertiser is misusing a trademark even when it isn’t. An advertiser could use a generic keyword like “phone” and have its ad pop up when someone searches for a phrase that contains that word, like “Verizon phone,” “silver phone,” or “phone PDA.”
How to File a Complaint
Go to Google’s “What Is Google’s AdWords and AdSense Trademark Policy?” page and look under “AdWords Trademark Policies in Sponsored Links” to find out what Google will investigate in your country. If it applies to your trademark problem, you can fill out a Google AdWords Trademark Complaint Form to have Google investigate the issue. If your complaint is valid — meaning an advertiser is using your trademark in a competitive, critical, or negative manner within its ad text — Google will require the advertiser to remove your trademark and bar it from using it similarly in the future.