A competing trademark as a search term for my Google ads?

09 July 2021 | Brand, Intellectual property

Advertising is effective to the extent that your campaign reaches the target audience. Google Ads supports companies with target. You can increase your trademark’s visibility in the results of Google Search through carefully selected search terms and related advertisements. As a marketing instrument, a Google Ads campaign is therefore indispensable. It is tempting to advertise using a competitor’s trademark in order to draw attention to your offer. But are you allowed to do this?

What, Google Ads?

Google Ads is an advertising tool that allows companies to promote themselves on Google Search. When you, as an advertiser, add relevant search terms to your Google Ads campaign, your ad will appear at the top of the search results when an internet user enters these search terms. For each click on the ad, you then pay a small fee to Google.

Example: when you google the search term “protect trademark” you will see at the top of the search results ads from some specialised law firms that offer these services.

AdWords, useful or useless?

It can be interesting for a company to use search terms to connect with the success of another (better known) brand. This enables you to try to attract the customers of your competitor.

But do this carefully, and choose your search words very deliberately A lot will depend on the industry, the target audience and on your offer. After all, it would be pointless to use your competitor’s trademark as a search term, pay per click on your advertisement and thus redirect their customers to your website, only to end up with no results because you don’t really have a relevant offer.

Advertising from a trademark perspective: Google advertising policy

Examples of search terms are numerous, but is it legal for one of them to be your competitor’s trademark? Yes, but…

Google has developed its own advertising policy, through which it tries to comply with legal requirements. However, this policy is not as refined as the current state of jurisprudence.

First of all, Google defines a number of actions for which you cannot advertise, namely when your website offers counterfeit, dangerous products (drugs, weapons…), dishonest behaviour (hacking software) and inappropriate content.

On the other hand, there is content that can be advertised but is subject to restrictions One example is the use of trademarks in Google Ads. A distinction is made between a trademark in the ad and a trademark as a search term.

Your trademark in the ad

Using another person’s trademark within your own advertisement is prohibited.

What can you do when you notice that another company is advertising with your trademark? Through Google Ads you can file a complaint in which you provide evidence of your trademark registration. After investigating the complaint Google can enforce certain restrictions with regard to the use of the trademark in the advertisement. In other words, you can take the advertisement offline by directly approaching Google.

Example: the Pepsi ad contains the trademark “Cola-Cola”, as “click here and find a supermarket nearby that sells our Coca-Cola”.

As a search term

Advertising on your competitor’s trademark is not allowed, using it as a search term is. In general, you do not commit a trademark infringement when you buy a competitive trademark as a search term to advertise your own products, which are an alternative for the brand products. Your competitor does not have to agree to this sponsored link.

Moreover, Google explicitly states that it does not research or limit trademarks as a search term. By googling your own brand name, you can check whether a competitor advertises on your trademark.

Example: an airline company is allowed to advertise using the “Brussels Airlines” trademark as a search term, in order to attract Brussels Airlines customers.

Is search term advertising always allowed?

Where does jurisprudence draw the line, or can you always lure your competitor’s customers to your site through selected search terms?

Not always, because you are guilty of a trademark infringement if it is impossible or difficult for the average internet user to find out which company the advertisement belongs to.

You may therefore not confuse or mislead the internet user. You may not create the impression that there is an economic bond with your competitor. If Google decides that the combination of the search term and the advertisement is confusing, after a valid complaint of the trademark owner, it will reject the advertisement.

Example: “Topbloemen” advertised through the trademark of its competitor “Fleurop”. Both are a flower delivery network with affiliated flower shops. The Dutch judge found that, for the consumer who searches on “fleurop”, it is not clear that Topbloemen is a competing network. After all, the Fleurop-network consists of 50.000 florists, who all sell flowers under their own name. The consumer who searches for “fleurop” and lands on the ad of Topbloemen, could think that it is just an affiliated florist. For that reason Topbloemen was not allowed to advertise through the search term “Fleurop” anymore.

What the average consumer finds confusing is of course a somewhat grey area. If you believe that a competitor is not abiding by these terms, then it is up to the national judge to decide whether the advertisement is just within or beyond the trademark restrictions of advertising, taking into account all the concrete facts of the case.

Well-known trademarks

But take notice, the European court ruled thatwell-known trademarks get a broader protection. For what reason? Well-known trademarks have a reputation they want to maintain, which attracts consumers and binds them to the brand.

What is not allowed?

  • Free-riding on the reputation of the trademark or misusing its reputation.

For example, Rolls Royce can prevent a whisky manufacturer from advertising the liquor using the Rolls Royce search term, as the whisky manufacturer is free-riding on the reputation of the car brand.

  • Weakening the identity and influence of the trademark.

For example, if Kodak bicycles are allowed, in a few years the strong Kodak brand for cameras will have lost its strength.

  • Detract from the trademark’s reputation.

For example, the trademark “Klarein” (a detergent) harms the reputation of the liqueur trademark “Claeryn”, which is pronounced in a similar same way, because you might think of the detergent while drinking the liqueur.

The simple fact that the well-known trademark itself has to invest more in advertising or loses customers because of your ad is not enough to stop you from using the search term.

What about comparative advertising?

The use of a search term should be seen as a demonstration of comparative advertising. According to the rules of comparative advertising, you may use a competitive trademark (and the corresponding product) in your ad for comparison with your own product. This is not a trademark infringement.

The strict requirements are that the use of the competitive trademark is not misleading, not confusing and not disparaging towards the trademark owner.

Example: “buy your glasses at Hans Anders, we are 30% cheaper than Pearle” is allowed comparative use.

This does not apply to the use of someone else’s trade name A trade name is not protected by trademark law and is used by a company purely in its commercial activities. Using a competitor’s trade name in an advertisement can be unlawful, but only legal action can be taken against this.

Conclusion

You can use the competing trademark as a search term to indicate that you offer alternatives to the branded products. You make sure that the search term, in combination with your advertisement, is not confusing nor misleading for the internet user.

If you want to use a well-known trademark as a search term, it is recommended to check that you do not damage its reputation.

But the other way around, you also have to tolerate that a competitor uses your trademark as a search term under his advertisement… Is this therefore a double-edged sword or a balanced attempt at marketing optimalisation?

If you have any questions about this, you can always contact us at hallo@dejuristen.be.

Written by Pauline Vertongen, Trainee theJurists, and Kris Seyen, Partner theJurists

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