Can you buy Adwords matching a competitor’s trademark?

By Frederick Noble, British and European Patent Attorney at Albright IP

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Patent attorney Frederick Noble

If you are starting up in a business and want to grow your market share, you might look jealously at more established competitors. People know the established name and might just search for that name without even considering whether there are alternatives. Breaking into a market can be hard.

Most people know by now that one way to appear at the top of Google search results for particular terms is to pay for “Adwords” in relation to those terms. So why not buy Adwords for your competitors’ well-known names? That way, when someone searches for them, they will see your alternative offering. Is that legal? It depends.

Marks & Spencer tried to do it when they set up a delivery service for flowers. They bought Adwords so that when customers searched for the leading brand “Interflora”, M&S’ adverts appeared. Interflora sued back in 2008, kicking off proceedings that would last more than six years and include three visits to the Court of Appeal and one to the Court of Justice of the European Union. This litigation eventually ran out of steam without reaching an authoritative conclusion on M&S’ ads, but it has left us with some reasonably useful guidance on the practice.

In a nutshell, the critical question is whether the advertisement does not enable normally informed and reasonably observant internet users, or enables them only with difficult, to ascertain whether the goods and services advertised originate from the proprietor of the trade mark.

Another way of putting that might be to say that as long as the advertisement itself is crystal clear as to the true origin of the goods advertised, then in principle there is no objection to buying the competitor’s mark as an Adword.

If you want to discuss the risks involved in using competitors’ marks, just get in touch with us.

albright-ip.co.uk