Since a 2014 High Court ruling, it’s been acceptable for companies using Google AdWords to select competitor trade marks as their ‘keywords’ (not only their own trade marks). Google AdWords is Google’s advertising system in which advertisers bid on certain keywords in order for their clickable ads to appear alongside Google’s organic search results.
Narly Kalupahana from Potter IP gave Level One residents some IP pointers around the use of Google AdWords at a recent Friday afternoon Tenant Talk. Here’s a summary:
- Selecting a competitor’s trade mark or name as a keyword for your campaign isn’t considered an infringement per se of their trade mark rights
- BUT be careful how you use it — and don’t complain if someone does it back to you
- If someone can show actual (or likely) confusion resulting from your Google AdWords campaign, it’s time to reign it in (it could potentially constitute trade mark infringement, or be a breach of the Fair Trading Act)
- Use it or lose it: Although in theory a trade mark registration can last forever (assuming that the renewal fees are always paid), if you don’t use a registered trade mark for a period of time (in New Zealand it’s three years), then a third party can apply to have it removed from the trade mark register on the grounds of “non-use”
- As soon as you know you’re going to operate in a country, register the trademark