Google’s new trademark policy comes into play from the 14th September 2010 in UK, Ireland and Canada, and effectively most of Europe. The change has been received with differing views. One view is that it will ultimately result in a better surfing experience for users; the other is that it is nothing other than a ruse for Google to hike up prices and cut costs. Whatever your view brands need to be aware of what, if any, rights they have left to protect their brands on line in sponsored search results on Google.

All this comes about because of a string of cases to the European courts. The latest case was reported in our blog of 9 July. This latest case, which again found in Google’s favour, stated that the use of trade marks as key words is only an infringement if the content of the sponsored link does not permit the average Internet user to readily ascertain whether or not the goods or services being advertised are those of the trade mark owner or the advertiser. This is an important and often overlooked distinction, especially by those who might only read the headline news. Jack Wallington in an IAB Blog states that

The policy allows qualifying advertisers to not only bid on other companies’ brand trademarks (a change made on 5th May 08), but to now include the trademarked term in the ad text. Primarily it means resellers of a product, companies that sell spare parts or compatible products, and information sites like reviews and news can now include trademarked terms in ad copy.

He goes on to add importantly however that:

…one of the caveats Google has announced, [is] that the only ads to be considered for removal [by Google] will be those that don’t adhere to the new guidelines or, if they do, those that confuse users.

The problem for advertisers using others marks is that it will be for national courts to decide whether it has succeeded in making the ad text sufficiently clear that the said advertiser is not the trade mark owner.  Even where an advertiser is found to be in breach of Article 5 of the Trade Mark Directive by using a trade mark as a keyword in ad text that is ambiguous about the origin of the product or service, there may be defences. There is the possibility of a defence under Article 6, but this defence includes the requirement to show that the use was in accordance with “honest practice”. It is hard to see how the defence would work where there is already a breach of Article 5.

In short it is all still a bit of a mess. What is certain is that the move opens up the paid for search market to advertisers that may well have had their listings previously blocked or censored. While it is true that more information may benefit consumers, advertisers and big brands will now face greater competition bidding on trade mark terms previously reserved for their exclusive use. This, according to Tom Jones of search marketing agency i-Crossing, will lead to an increase in price for such terms, benefiting Google. He envisages increases of up to 10% and cost brands thousands in lost revenue. In Marketing Magazine Paul Mead, managing director of VCCP Search, said the prices might be driven up by more than 50%.

From the 14th September Google will also revise its policy around using trademarks as keywords across Europe. Keywords that were previously restricted as a result of trademark investigation will no longer be restricted in most European countries. Again advertisers will be able to complain about the use of their trademark by a third party if they feel that it leads to a specific ad text that confuses users about the origin of the advertised goods and services. Google will then carry out a limited investigation and will remove the ad if it finds that the text does indeed confuse users.

The position in UK, Ireland and Europe now reflects the state of play in the US since May 2009.

While a number of cases have been brought by advertisers against Google in the EU courts, what has not happened is for a major brand owner to object to the use of its marks in ad text by a third party advertiser. The simple reason here is that such proceedings are time consuming, expensive and the remedies unsatisfactory. The best hope is still to use the Google Trade Mark Guide for Sponsored Links and to object on the grounds the use is contrary to the guidelines. Just how effective this recourse will be has yet to be seen.

So from the 14th September 2010 advertisers will be able to complain about the use of their trademark by a third party if they feel that it leads to a specific ad text that confuses users about the origin of the advertised goods and services. Google will then carry out a limited investigation and will remove the ad only if it finds that the text does indeed confuse users.