Can you stop a competitor bidding on your trade marks as Google AdWords?: The High Court reminds us that sometimes you can

The High Court recently found that Victorian Plumbing, a bathroom retailer, had infringed the trade marks of Victoria Plum (previously trading as Victoria Plumb) by bidding on those trade marks as Google AdWords. This resulted in advertisements for Victorian Plumbing’s services being displayed when users of the Google search engine searched for “Victoria Plumb”.

Use of third party keywords has been extensively considered by the courts

The use of third party trade marks as keywords in Google AdWords has been considered extensively by the courts, with the Court of Justice ruling in the Google France line of cases that such use did not necessarily infringe, even if the trade marks used were those of a competitor. The Victoria Plum case is a reminder that such use will still infringe if the advertisements displayed do not enable average Internet users to ascertain that the goods or services offered originate from a third party unconnected with the trade mark owner.

The two bathroom retailers involved in the case – Victorian Plumbing and Victoria Plum (Victoria Plumb until it dropped the “b” in 2015) – have both been trading since 2001. Victoria Plum is the larger of the two companies and has the greatest level of goodwill and reputation. There is clearly a fairly high level of similarity between the two names and that similarity, together with the enhanced distinctive character through use of Victoria Plum’s trade marks and the fact that an internet user who had searched for Victoria Plum/Plumb was likely to be expecting to find links to its website, led the High Court to conclude that the display of Victorian Plumbing’s advertisements could lead to confusion. Expert evidence concerning click through rates was also relied upon by the judge.

Distinguishing this case

The case can be distinguished from many Google Adword or keyword disputes where, although a competitor’s brand is being used as a keyword, the advertisement displayed is clearly for the advertiser’s readily distinguishable brand. In those circumstances, there will often be strong arguments that the average internet user will easily identify the advertisement as originating from a third party unconnected with the trade mark owner. This does not mean, however, that advertisers should treat the case law as allowing the use of competitors’ trade marks as keywords in all circumstances. The facts of particular cases may mean that the lack of connection with the trade mark owner is not clear. As well as situations when the two brands are similar, there may be a greater risk of a lack of clarity if, for example, the advertiser could be perceived as having a connection or trading relationship with the brand owner whose trade mark is being used.

Is there risk of confusion or a lack of clarity arising from the use of third party marks?

The use of competitors’ trade marks as keywords, such as Google AdWords, is now widespread and in many cases the risks of a successful claim being brought by the trade mark owner will be low. Advertisers would be advised, however, to consider whether there is a risk of confusion or a lack of clarity arising from the third party trade marks that are being used as keywords and the ad text that is displayed. Where there is such a risk, advertisers could seek to reduce this by making it clear in the ad text that the goods and services offered are alternatives to those offered under the trade mark that is the subject of the search, e.g. by prominently including the words “Try xxxxx instead”. Trade mark owners who feel that the use of their trade marks as keywords is causing confusion, or even just a lack of clarity, may well have a trade mark infringement claim and may wish to seek appropriate advice.