Retail surgery: Have the rules changed again on what Google AdWords we can buy?

Google AdWords are the paid-for search terms or keywords that online advertisers can bid on in order for their ads to appear as sponsored links when a consumer uses Google to search on that term.

The European Court of Justice has ruled that Google’s practice of selling companies’ trademarks as AdWords is legitimate. But law firm Mishcon de Reya warns this does not mean advertisers using others’ trademarks as AdWords are free to do whatever they want.

Two judgments handed down by the Court in March this year should clarify the situation. Mishcon de Reya points out that the Court has decided Google is not infringing trademarks when it sells them as keywords. But an advertiser can infringe a trademark if it is using an identical or similar term as an AdWord if the ad is misleading.

“The ad must not mislead people into believing that the advertiser is connected to the trademark proprietor,” says the law firm.

“If there is any ambiguity - either by some confusing statement in the ad or by simply being vague about who the advertiser is - then the use by the advertiser of the trademark as a keyword will potentially infringe.

“It is irrelevant whether or not it would become clear, upon clicking through the link to the advertiser’s website, that it was not connected with the trademark proprietor.”

Mishcon de Reya concludes that these recent cases clarify that it is not necessary for the trademark itself to appear in the text of the ad in order for there to be an infringement.