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This article discusses the law of Trademark and the interplay with keyword searches and GoogleAds / AdWords advertising campaigns.
E-Commerce is booming, with many businesses moving towards digital channels to sell and promote services/products to customers.
The UK has one of the most advanced e-commerce markets in the world, with wholesale and manufacturing generating the highest e-commerce sales in 2019, according to the Office of National Statistics.
Manufacturers (like most businesses) typically advertise their products and services online via websites that bring together products and services, enabling customers to conveniently buy these.
Search engine functionality is so far advanced now, meaning that a consumer can key in a term on a browser for a particular brand of manufacturing product and will instantaneously be directed to the manufacturer's website. Specific advertisements can also appear in response to the user typing in keywords or phrases for a particular product or service for a business which then directs the internet user to that business's website.
Keywords are often bought by advertisers from search engines such as Google. When certain keywords are searched for by the internet user, such as "Dyson" or "Bosch", they can bring up banner advertisements for the advertiser's business. These advisements are sometimes referred to as 'sponsored links', which appear on the results page after the search term is keyed in.
For example, Google operates a service known as Google AdWords, which displays a list of sponsored advertising links normally at the top of the search results page. If more than one business purchases a particular keyword, Google auctions the order of the display for the relevant sponsored link and the highest bidder will achieve the highest position in the sponsored link section of the results page. The advertiser pays on a "cost-per-click" basis each time a user clicks on the hyperlink in its sponsored link and is directed to the advertiser's website.
Trademarks (protecting distinctive words or phrases) are often used as keywords to direct online traffic to a particular product or service, and very often, these keywords appear on sponsored links – for example, "Buy LUSH Handmade Cosmetics UK" or "adidas® Official Online Store – Click and Collect Available".
There are seemingly very limited restrictions on the use of trademarks as keywords by the search engine providers themselves so long as such use does not violate the search engine provider's policies. The guidance from providers can sometimes be confusing, and often it is unclear whether the use of a trademark as a keyword would amount to an infringement or not.
The use of trademarks as keywords can be problematic. For example, a competitor manufacturer uses another manufacturer's registered Trademark as one of its keyword searches, which causes online traffic to be diverted to its own website through advertisements generated by the keyword search. In that scenario, the trademark holder might be rightly aggrieved by this, especially where it has invested significant time and resources in building up its brand only to have someone else use it as a keyword to divert business.
The law on the use of trademarks in search engine keyword advertising (such as Google's AdWords service) has been considered by a sequence of cases such as the Reed case; the Interflora v M&S case; and the Amazon v LUSH case.
The case authorities established that a trademark owner can prevent others from using its Trademark as a keyword in relation to goods or services identical with those for which the mark is registered, provided that the advertisement that is displayed fails to make it clear that the goods or services originate from someone other than the trademark owner.
The key test is that if the advertisement does not enable a normally informed and reasonably attentive internet user to ascertain whether the goods or services referred to by the advertisements originated from the trademark holder or the advertiser, then that advertisement is likely to have infringed upon the Trademark.
You might consider first lodging a complaint with the search engine provider. Very often, search engine providers have their own internal complaints procedure that can be utilised to have the advertisements removed. However, these providers are often reluctant to take steps to disrupt the free flow of information or access to services by advertisers and internet users.
If you have a registered trademark for a specific term (say your brand name for a product, for instance), you will have the right to prevent others from using that trademarked term within a certain class of goods or services. Depending on where the Trademark is registered, this right can extend to the UK, Europe, or anywhere globally.
It is very important to protect your brand and to enforce trademarks whenever there is a breach of Trademark. If you take no action, then this could be interpreted as acquiescence to the breach, which undermines the whole purpose of you having a registered trademark in the first place.
If a breach of Trademark is suspected, it is important to take legal advice to address it without delay.
If you have any questions or would like more information on Trademark Infringement, our Manufacturing Solicitors are here to assist. We are always happy to have an initial no-obligation chat to help guide you in the right direction. You can contact the Manufacturing Team on 0161 941 4000 or email The Manufacturing Team.