Open season on trademarks after Google withdraws protection

7 May 2013

Open season on trademarks after Google withdraws protection

The Internet has become a riskier place for New Zealand companies trying to protect their brand after Google announced it will no longer monitor or restrict the sale of AdWords in response to trade mark complaints.

Intellectual property expert and lawyer, Theodore Doucas of Zone Law (an intellectual property law firm and Zone IP, an intellectual property consultancy in Wellington), said Google's decision to remove its trade mark complaints and review process will leave companies vulnerable to trademark infringements – even where these are patently obvious.

"Basically Google makes its money from Adwords and the trade mark complaints and review process was getting in the way of profits," he said.

Google's decision follows from the organisation's victory over the Australian Competition and Consumer Commission (ACCC) in Australia's High Court recently, which upheld Google's argument that it was not responsible for the advertisements because it is only the conduit for the advertiser.

"This means companies can no longer ask Google to remove keywords even when there is a clear cut case of a trademark being infringed. It’s bad news for companies who find that their competitor’s are blatantly using their name to divert traffic to their website."

Mr Doucas said the practise is common and his firm regularly fields questions from companies regarding the use of their name or product brands as keywords by competitors in online Adword campaigns.

“The result from the Australian High Court was unanimous and just adds to the mixed results coming out of courts around the world when it comes to protecting your name or brand from competitors who use it in their Adword campaigns. Mostly its the plaintiffs who lose."

Mr Doucas said negotiation should always been the first port of call for companies in a trade mark dispute, but failing that there are options to litigate under the Trade Marks Act 2002 and under Common Law - but it’s a murky, difficult and expensive exercise.

Steps a company should take to protect its brand and name from competitors using them in their own Adword campaigns include:

1. Register your trade mark. A registration certificate is prima facie evidence of the validity of your registered mark.

2. Monitor your trade mark by opening a Google Alert for any references to your name or brand. The service from Google is free, easy and quick.

3. If a competitor uses your trademark in Google’s Adwords, or infringes your brand rights in any other way, consult a trademark lawyer for advice.

If you continue to have issues with your competitor, contact your trade mark lawyer.

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