Latest insights from our experts

Jill Headford

Posted 20 March 2015
by Jill Headford

Can you stop competitors using keywords to take advantage of your business?

If you have a registered trade mark then maybe.

Paying to get your website to the top of search results when users search for a competitor’s name (known as ‘keyword advertising’) is a hot topic. There has been debate between brand owners who think this should be prohibited when the name is a registered trade mark law and online retailers who argue it’s just fair competition.

At the moment it is extremely difficult to stop competitors paying for keyword advertising using your name in search engine optimisation or keyword searches to draw traffic away from your website. Consider the following:

  • Have you registered your business and/ or product name as a trade mark? If not then do it now, otherwise it is going to be extremely difficult to stop competitors using your name
  • Do the search results include your trade mark? If not then this probably isn’t infringement
  • How similar is the competitor’s website? Is it clear to customers that once they click through that they are not on website they intended? If it is clear then there is probably no infringement
  • Is the competitor’s website detrimental toward your trade mark in any way? For example does it criticise your product or advertise something inappropriate?

Speak to our IP team for detailed advice on how to register a trade mark and protect your brand.

Last year it looked like the law was decided – paying for keywords that were also a trade mark was infringement if the user landed on a competitor’s site thinking they were on the trade mark owner’s site or the competitor’s site was detrimental to the trade mark. This is no longer the case.

It now seems likely that keyword advertising using competitors’ trade marks is legal. Advertisers still need to be careful that customers aren’t made to think they are visiting a trade mark owners website when they click through. This is good news for online retailers with big search engine advertising budgets looking to piggyback on the efforts of more established brands but bad news for the more famous brands.

 

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About the author

Jill Headford

Jill Headford

Partner

A partner in the firm since 1994 and an experienced Court and Tribunal advocate, Jill specialises in resolving disputes and is a member of the Property Litigation Association