Google ad policies and intellectual property tips for brands and online and social media marketers

What happens when Google allows anyone to bid on trademarked keywords? What can be done if sponsored ads from Hard Rock Café are seen when you search for McDonalds? Or if Google displays the Note 3 as a ‘Sponsored Link’ when someone searches for iPad? Or if a new board game called Dominoes showed up as a sponsored link for the keyword ‘Dominos’ – will Dominos Pizza have the right to get Google to stop the ad?

It is well-understood that a trademark grants you the exclusive right to sell products – no other seller (other than the trademark holder) can stake a claim to trademarked images or logos, unless of course, it obtains a license from the owner. How does Google ensure this works? How can online marketers and brand owners ensure that competitors do not bid on the keywords owned by their client / brand? How can companies ensure that internal marketing departments are not held liable for infringement by bidding on keywords of competitors?

Google has faced a lot of cases across the world regarding this (and has largely gotten away due to its ad policies) – it is the most widely used search engine, and because it has a revenue generation model linked to search (over 90 percent of its revenues annually have been generated through adwords). 

There are two risks for brands, internet and social media marketers and advertisers who use Google for advertising:

i) That another person or entity has bid on the keywords of your brand

ii) That ads with respect to the mark are involve protected keywords owned by another entity – which involves the risk that they may be stopped or that the owner may be held liable for infringement. 

The questions below will help you to understand how Google enables marketers and brand owners to address these risks. 

#1- What action can be taken if third party ads are being shown as sponsored links for keywords that are owned by the business?

The first step is to report a complaint with Google. As per Google’s own policy, it investigates can investigate and stop ads using trademarked words which are started by someone who does not own the trademark or does not have the necessary authorization for it.  

“Google will investigate and may restrict the use of a trademark within ad text. Ads using restricted trademarks in their ad text may not be allowed to run. This policy applies worldwide.

If an ad agency, subsidiary or a marketing agency intends to bid on a trademarked term, it should ideally obtain an ‘authorization’. Advertisers can use a trademarked term within ad text if they are authorized. For obtaining an authorization, the trademark owner has to submit his assent for use of the mark using the trademark authorization form, or a notice which should be forwarded to ads-trademarks@google.com. Authorization is given to individual AdWords accounts, so the trademark owner must submit the customer ID of each AdWords account they want to authorize. Ads targeting US, Canada, UK or Ireland, are required to comply with a separate policy for resellers and informational sites, but do not require a specific trademark authorization from the owner.

The trademark owner is specifically required to authorize each AdWords account by submitting the authorization form.

Can limited authorizations be implemented by Google?

Intellectual property and marketing terms can sometimes be quite sophisticated – for example, what if Woodland authorizes its advertising agency to use the logo only for footwear and not for apparel? What if it wishes to grant authorization only for 2 months to ascertain the marketer’s performance over the ‘trial’ period, based on which it can decide whether to extend or terminate the relationship?

As per Google’s policy, the trademark owner may modify or cancel the authorization at any time, but Google does not accept conditional authorization requests that include time expiration or limitations on use of the term in specific contexts – it will either accept or reject all ads.

Any such conditions may have to be contractually incorporated between the advertiser and the owner, and manual instructions will have to be provided to implement them.  Therefore, Woodland will have to specifically instruct Google when to start or block ads. Restrictions on the segments for which the advertiser can place advertisements cannot be enforced through Google – Woodland will have to incorporate this in a marketing / freelancer or consultancy contract.

#2 – Under what circumstances can an advertiser or marketer use trademarked words?

Google’s policy is fairly intuitive on this – there is no requirement to obtain an authorization if:

a) the ad text uses the term descriptively (not with respect to the trademark) – this accommodates the wording of the Trademarks Act. Recently, Consim Info Pvt. Ltd. filed a case against Google at the Madras High Court, when it realized that Google was displaying sponsored links from shaadi.com and jeevansaathi.com when someone searched for Bharatmatrimony, Tamilmatrimony, Telegumatrimony, Bharatrimony, Bengalimatrimony and Muslimmatrimony. Google had essentially allowed the owners of ‘shaadi.com’ and ‘jeevansaathi.com’ to bid on these keywords for their ads through the Keyword Suggestion Tool. Google was not held liable because these words were descriptive of services being provided (that is, matrimonial services for specific cultural or religious communities) and hence there was no violation of trademark law. Google cannot, however, suggest fanciful names or competitor’s names as possible keywords for the tool – for example, it cannot suggest Samsung as a keyword when ‘Apple’ is searched for.

b) or, the ad is not in reference to the goods or services corresponding to the trademarked term – for example, Google will not reject an ad by an e-commerce store selling pet food online with the name of ‘Tommy Pet Food’, if Tommy Hilfiger files a complaint, because the products sold by the e-commerce store, i.e. pet foods have no connection with fashion items. Similarly, Google will not be required to discontinue ads from Mc Donalds for the keywords, if Apple complains arguing that customers of the Macbook are being confused, because computers and fast food items are entirely different product segments.

In other cases, there is a risk of the ad being discontinued in the event of a complaint (unless an authorization form has been filed), or of trademark infringement litigation. 

Action point for brand owners and consultants

Google does not check whether a particular word is a trademark or not, and certain trademarks are descriptive, thus implying that these can be used as keywords. Therefore, brand owners and consultants can periodically conduct searches on the engine with keywords related to their brands to to see if any competitor’s results appear. If they do, they can report complaints to Google for removal – Google will do this because it will otherwise be liable for contributory infringement under Indian trademark law. This is what had happened in Consim India.   

As social media websites such as Facebook and LinkedIn do not advertise by keywords but by other attributes such as commonality of interest –  there may be less likelihood of theirs facing such issues.

Abhyudaya Agarwal is a co-founder of iPleaders, a legal education company. iPleaders conducts a business law course (accessible on web and Android) for entrepreneurs, managers and working professionals in collaboration with National University of Juridical Sciences – the course focusses on teaching practical aspects of business law (without technical jargon) and has been highly appreciated for providing valuable insights on legal strategy, commercial agreements and negotiation. You can access a demo here.