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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