Written on the 9 May 2011


QUEENSLAND companies using the internet to boost business should choose their words carefully to avoid being hit with trademark infringement claims.

McCullough Robertson partner Malcolm McBratney, says a recent Danish decision highlights the risk of using a competitor’s trademark as an AdWord on Google.

“Even if the trademark is a descriptive one and not a title or company name, using it for your own business by making it an AdWord in the Google search engine could result in trouble, including legal action and damages,” he says.

“This decision certainly has wide implications for businesses everywhere with the growing reliance on internet marketing and search engine optimisation.”

The recent case in Denmark’s Commercial Court, ruled that a company’s use of a rival company’s trade mark as an AdWord on Google was a violation of trade mark rights and contrary to good marketing practice.

“The trade mark ‘Billedbutikken’, which means picture shop, had been used by the owner for a number of years in relation to the process of digital photographs, not a title,” explains McBratney.

“Pixelpartner stopped using the word after demands from the trade mark owner but was still taken to court and successfully sued by Billedbutikken for lost turnover and damages.”

McBratney says the decision to award compensation and damages supports the position that use of a trademark as an AdWord search term on Google can constitute trade mark infringement and a breach of competition and consumer legislation.

“The case would be decided similarly here in Australia,” he says.

“Before embarking on an online campaign or new brand, businesses need to look before they leap and ensure they’re not using brands or words that other businesses are already using as identifiers for their business.

“This is especially the case when considering domain names, social networking, AdWords and other online activities.”






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