By Nicholas Smith -
Snapshot
- Presently, it is permissible to use a competitor’s name and/or details as a keyword when advertising on Google AdWords.
- This is because use of a mark in a keyword is not use as a trade mark, since it is not use in public as an identifier of source and no representation is made to the public from the use of the mark in a keyword and hence it is unlikely to be misleading or deceptive conduct.
- However, the use of a competitor’s name and/or details as part of a sponsored link can be trade mark infringement or misleading and deceptive conduct, depending on the representation made in the sponsored link or whether the mark is used as a trade mark in the sponsored link.
For those businesses catering to the general public, Google AdWords have become an important tool for increasing online presence or visibility in a Google search. However, the success of Google AdWords has brought with it the temptation for businesses to improve their online profile by making reference to a competitor or related business in their advertising.
The recent case of Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255 considered the limits of this conduct and asks what is fair competition and what breaches the law, be it s 18 of the Australian Consumer Law or s 120 of the Trade Marks Act.
Background facts
Veda (the applicant) is a leading Australian provider of credit reports on individuals and companies. It has a number of registered Australian trade marks, including a trade mark for VEDA for financial services in Class 36.
Malouf Group Enterprises (the respondent) runs a business which provides credit repair services assisting individuals and businesses to correct inaccuracies in credit reports, including those provided by Veda. It operates from a number of websites including www.cleanyourcredit.com.au.
Malouf advertises its products through Google AdWords. The AdWords program allows advertisers to select certain keywords which, when searched individually or in combination with other words, may result in the sponsored link (the advertisement) being displayed above or to the side of the organic search results.
Malouf set up various advertising campaigns that included keywords that contained the word ‘veda’. Many of the sponsored links reached as a result of those keywords being entered included, ‘veda’ in the title of the links, for example ‘Clean your Veda File’, ‘Fix your Veda Report’ and ‘the Veda Report Centre’.
Veda claimed that Malouf’s use of ‘veda’ in both keywords and in the text of sponsored links amounted to trade mark infringement under section 120(1) of the Trade Marks Act 1995; and misleading or deceptive conduct and false or misleading representations contrary to sections 18 and 29(1)(h)-(i) of the Australian Consumer Law. In its defence, Malouf argued that the use of ‘veda’ in keywords was not use as a trade mark.
