Can the use of trademarked terms on Google AdWords be considered a trademark infringement?
The debate is heated once again with the Catch Group’s complaint against Kogan over the latter’s use of the word “catch” on AdWords.
In May, online retailer Catch Group filed a complaint against its fellow online retailer Kogan on its use of the word “catch” on Google AdWords to drive traffic to their catchmobile.com.au site.
Catch Group’s claim read that searching the keywords ‘catch connect’, ‘catch mobile’ and ‘catch mobile plans’ would yield sponsored links to Kogan’s sponsored domain the catchmobile.com.au. Catch also alleged that Kogan was trying to pass off its products to be related to their group as the latter registered other products with the domain names catchinsurance.com.au and catchloans.com.au.
Catch further claims that Kogan contravened the Australian Consumer Law for misrepresenting that the two companies are related or that the products of Kogan are also Catch products.
Catch is seeking damages for the alleged violations and seeks to require Kogan to cancel its domains.
We are yet to learn the court’s verdict but the Catch vs Kogan case is similar to the Veda Advantage Limited vs Malouf Group Enterprises lawsuit.
Veda Advantage Limited vs Malouf Group Enterprises
In 2016, Veda Advantage Limited filed a case against Malouf Group Enterprises for using VEDA Advantage’s trademarks in their AdWords advertising.
Initially, the court stated that Malouf Group was not guilty of trademark infringement because they used the keywords to describe the services offered rather than use them as a trademark. However, there were instances when Malouf Group used headings such as ‘The Veda Report Centre’. The court found that the use of Veda’s trademark was no longer geared towards describing products but to mislead consumers into thinking that Malouf Group was connected with Veda.
For the second category, Malouf Group was found guilty of infringing Veda Advantage’s trademarks.
Laws are still being developed around the use of Google AdWords. Meanwhile, the Veda vs Malouf case remains to be a useful framework for businesses using AdWords.
What can businesses do to prevent this from happening to them?
Despite the complexities of Google AdWords policies and our existing laws, the best way to protect your trademarks is to have them registered.
Google AdWord’s policy has changed where trademark owners can submit a dissatisfaction notice if someone uses their trademark in an ad’s text. Google will privately look into the matter and restrict the use of the trademark if the site is not a reseller or informational site.
Should you need to go to court, provisions from the Trademarks Act and Australian Consumer Law will also give your business varying layers of protection.
Registering a trademark may be challenging, but we can guide you through the process. With over 20 years of experience in helping business owners with trademark registration, you can rely on us to help you secure the protection your business deserves, both in Australia and overseas.
Contact us today on +61 2 9520 4366 for a 10-minute complimentary consultation about the trademark application process in Australia. You can also reach us at firstname.lastname@example.org for other enquiries.