Google's change in direction - keywords

Google has recently announced a change in its formally pro-brand owner keyword policy which has major implications for brand owners in the UK and Ireland.

The debate over keywords

Businesses want to ensure their websites obtain high rankings in search results to increase the number of users to their sites (it is estimated that about 70 per cent of all website access is through search engines). Search results that require payment by advertisers - sponsored keywords - have caused much debate as to whether the registration of brand names in keywords by third parties (usually competitors) is legitimate.

Brand owners consider that the purchase of trade marks as keywords by third parties amounts to infringement of their registered marks, whereas search engine providers argue that internet users are not confused by sponsored search results. These conflicting positions have been tested through global litigation without a clear trend emerging.

In the US, despite numerous challenges, aggrieved brand owners have yet to clearly establish that such practices constitute trade mark infringement. However, in France and Germany the courts have been more pro brand owner, with a number of decisions being made against Google.

Google's new policy

In the UK and Europe, Google previously sided with brand owners. If a brand owner complained to Google about the use of their brand name as a keyword by a third party to secure a high ranking in sponsored search results, Google would remove the keyword and prevent any future use of the keyword unless it was by the brand owner.

Google is now releasing its control over the use of brand names in keywords in the UK and Ireland. To bring the policy in line with that in the US and Canada, from 4 April 2008, Google will no longer consider complaints from brand owners regarding the use of their trade mark terms as keywords that have been registered by third parties.

Further, from 5 May 2008, keywords that have been disabled as a result of a prior investigation will no longer be restricted in the UK and Ireland. However, Google will continue to undertake limited investigations regarding complaints about the misuse of brand names in advertising content.

Whilst not linked, this change of policy coincides with a recent UK decision. In Victor Wilson v Yahoo! UK Ltd (2008) it was held that buying "spicy" (and various other words combined with "spicy") as keywords did not infringe the "Mr. Spicy" trade mark.

However, in that case the court did not have to address the question of whether there would be a claim for infringement against a customer who subscribes to a sponsored keyword that is identical to a competitor's brand name.

Tips for brand owners

As brand owners several steps can be taken to protect the use of your brand names as keywords:

-  Purchase keywords for your brand names from the major search engines. This can be relatively inexpensive, particularly if balanced against the damage that may be caused to your brand if the keyword is registered by a competitor.

-  Regularly monitor the use of your brand names as keywords by conducting searches through the main search engines. These searches are free and can be undertaken quickly.

-  Review the different policies operated by the various search engine providers regarding the use of trade marks by third parties as keywords. Some search engine providers still offer quick and efficient redress for brand owners.

-  For key brand names, consider using bespoke services that can identify search engine abuse by competitors using third party brand names.

Kate Ellis 2008-05-07