Out-Law News 3 min. read

Google changes AdWords policy to allow trade marks in text of US adverts

Google will allow companies to use other people's trade marks in search engine adverts without their owner's permission for the first time, it has said. Use has previously been restricted to the use of trade marked terms as triggers for the ads.

Google has said companies which sell branded goods will be able to name those brands in their adverts on Google, even if the brands are trade marks and the consent of the trade mark owner has not been received. The change will only apply in the US.

Google's AdWords is a keyword advertising system by which companies bid for the right to have their text ads displayed alongside the search results for certain keywords.

Google has long allowed US companies to pay to use other people's trade marks as keywords, so that their ads will be displayed beside the search results of another person's trade mark. It previously said, though, that companies are not allowed to use the trade marked term in the actual adverts.

That has now changed in the US, according to an announcement by Google AdWords employee Dan Friedman.

"Under certain criteria, you can use trademark terms in your ad text in the US even if you don't own that trademark or have explicit approval from the trademark owner to use it," said Friedman on a Google blog. "This change will help you to create more narrowly targeted ad text that highlights your specific inventory."

"For example, under our old policy, a site that sells several brands of athletic shoes may not have been able to highlight the actual brands that they sell in their ad text. However, under our new policy, that advertiser can create specific ads for each of the brands that they sell. We believe that this change will help both our users and advertisers by reducing the number of overly generic ads that appear across our networks in the US," he said.

Google has recently been liberalising its trade mark policies in relation to AdWords. Earlier this month it expanded from four to 194 the number of countries in which it would not stop AdWords advertisers from using other people's trade marks as keywords. Last year it had expanded that policy from the US and Canada to the UK and Ireland.

"We believe that this change will offer you the opportunity to provide users with more relevant information, choice and options while respecting the interests of trademark owners," said Friedman.

Trade mark law expert John Mackenzie of Pinsent Masons, the law firm behind OUT-LAW.COM, said that sometimes trade mark use will be reasonable, but that Google's policy change will still cause companies headaches.

"It is clear that there will be some cases where the use is legitimate, for example for businesses that are selling someone else's goods," he said. "But it does cause a greater problem for trade mark owners because it is more material for them to police."

"I think we can expect to see some of them challenging Google themselves, saying that it is profiting from trade mark infringement," said Mackenzie.

Google began to take adverts containing others' trade marks last Friday, and the adverts will go live from the middle of June.

Google outlined the circumstances in which it would not stop advertisers from using other people's trade marks in their ads. It said that it would be permitted when the term is used in a descriptive or generic way and not in reference to the trade mark owner; when the term is used by a reseller of the trade marked or a supplier of components corresponding to a trade mark; and where the advertiser is an information resource that does not compete with the trade mark owner. The new policy does not appear to endorse comparative advertising.

US courts had previously drawn a distinction between the use of a trade mark as a keyword and its use in the text of an ad. Insurance company Geico lost its case against Google in 2004 when it tried to stop Google selling its trade marks as keywords.

The judge in that case, though, allowed the issue to go to a further trial on whether or not Geico's trade marks should be allowed to appear in the text of adverts. Google and Geico later settled that part of the case on terms that were kept private.

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