A recent decision from the Austrian Supreme Court has flagged up the risk for advertisers using Google's Dynamic Search Ads of infringing, entirely unintentionally, third party trade marks which can appear in the ads. This risk of infringement would seem to apply equally in the UK.
Google's Dynamic Search Ads
Dynamic Search Ads will appear at the top of, or to the right of, Google's normal search results. However, unlike Google's normal adverts (for which the text of the advert is supplied by the advertiser), the content of Dynamic Search Ads are "dynamically" generated by Google, by lifting text from the advertiser's website. According to Google's page about them:
Dynamic Search Ads use your website content to target your ads and can help fill in the gaps of your keyword based campaigns. Dynamic Search Ad headlines and landing pages are also generated using content from your website, which keeps your ads relevant and saves you time.
When someone searches on Google with terms closely related to the titles and frequently used phrases on your website, Google Ads will use these titles and phrases to select a landing page from your website and generate a clear, relevant headline for your ad.
However, the adverts do not confine themselves to reproducing content from the advertiser's website. They can also reproduce the search term used which generated the advert, which is a problem if that search term happens to be someone else's trade mark.
The Austrian Case
A German company that produces various dehumidifiers, dryers and air purifying products had the misfortune of one of its Dynamic Search Ads appearing on google.at and google.de with the third party trade mark AIRBUTLER displayed at the top of its advert. AIRBUTLER is protected in Austria as a trade mark, as well as across the EU by an International Registration, for "apparatus for ventilating purposes" – i.e. the same goods as those offered by the advertiser.
The owner of the AIRBUTLER trade marks sued the advertiser for trade mark infringement in Austria. Both the Austrian appeal court and now the Supreme Court held that the appearance of the AIRBUTLER trade mark in the Dynamic Search Ad was indeed trade mark infringement. This was despite the fact that the advertiser had not requested that Google make its advert responsive to a search for that trade mark and it had no idea that the advert would contain the trade mark.
Although this case did not involve the use of keywords, the Austrian Supreme Court applied the now well-established European case law on keyword advertising. Under that line of case law, it is permissible to bid on someone else's trade mark as a keyword - i.e. in order to cause a search for that trade mark to generate an advert in search engine listings. However, there is a condition attached: someone viewing the results (who is deemed to be reasonably informed and observant) must be able to easily discern that the advert is not for the goods or services of the trade mark's owner (or an economically-linked undertaking). The Austrian Supreme Court found that, in the case before it, such a person would not be able to easily discern that the advert was not connected with the proprietor of the AIRBUTLER trade marks – due to the trade mark featuring at the top of the advert. Therefore, the trade mark was infringed.
The decision, while undoubtedly very harsh on the advertiser – given it had no knowledge that Google would place someone else's trade mark in its Dynamic Search Ad – is unsurprising and it is likely that the outcome would be the same in the UK. The elements necessary for trade mark infringement are all present – and innocent infringement has never been a defence. The entirely unintentional nature of the infringement would be likely to reduce the damages which an English court might award, so long as the advertiser took steps to remove the trade mark from its advert upon being notified.
Google's Dynamic Search Ads therefore create a real risk of inadvertent trade mark infringement for advertisers. Google does offer advertisers the ability to select "negative keywords" – i.e. keywords which, if searched for, will not trigger the advert. However, it would seem a Herculean task for an advertiser to think of all possible competitor trade marks which might be selected by Google to feature in its advert, in order to negatively match them. Also, of course, advertisers typically want a search for a competitor's trade mark to prompt their own advert – a practice that is entirely legal, provided the relevant criteria are met, as set out above. What they do not – or should not – want, is for the competitor's trade mark to feature in the advert itself. Until Google changes its practices, it may be that its Dynamic Search Ads are best avoided.