AdWords and Trade Marks

Jane Lambert

Google AdWords and similar schemes with other search engines are a powerful way to promote a business as Rachael's Kitchen shows in her video which appears on Google's website.  They enable businesses to

"Be seen by customers at the very moment that they’re searching on Google for the things you offer. And only pay when they click to visit your website or call you."

Advertisers sponsor the keywords that they believe to be relevant to their offer.  Whenever a customer types those keywords into the search engine their ad appears on the search engine research page. If the customer clicks the "Call" button or the link to the advertiser's website, the advertiser pays a fee to the search engine operator.  If more than one firm wants to sponsor the same search term an automated auction takes place and the one that is prepared to pay the most gets the best spot on the results page.

That is called "pay-by-click" bidding and in the overwhelming majority of cases it is perfectly lawful. But there may be trouble if you sponsor one or more of your competitor's trade marks as a keyword for your product.  Both sides did that in a case called Victoria Plum Ltd, v Victorian Plumbing Ltd, that came before Mr Justice Henry Carr a few weeks ago.

Victoria Plum Ltd, which sells bathroom equipment, had registered the words VICTORIA PLUM as a trade mark for all sorts of goods and services.  Victorian Plumbing Ltd., which ran a similar business, had bid for the following search terms:

a) "victoria plumb" / "victoriaplumb";
b) "victoria plum"/ "victoriaplum";
c) "victorian plumb" / "victorianplumb";
d) "victorian plum" / "victorianplum";

When those words were typed into Google's search engine an advertisement for Victorian Plumbing with a link to their website would appear on the page that displaying the results of the search. Victoria Plum also bid for Victorian Plumbing's name as a search term but on a much smaller scale.

Victoria Plum sued Victorian Plumbing for trade mark infringement and Victorian Plumbing counterclaimed against Victoria Plum for passing off. The action came on before Mr Justice Henry Carr who decided for Victoria Plum on the infringement claim but Victorian Plumbing on the counterclaim for passing off. If you want to know the arguments that were used and the details of the judgment I have written a full case note for my NIPC Law blog (see Plummy 25 Nov 2016).

So the moral of this story is to take care when bidding for search terms. It may not be necessary to carry out a trade mark search on every keyword but try to avoid using the registered trade marks or corporate names of your direct competitors,

if you want to discuss this case, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.