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How Are Trade Marked Words Used in Advertising Campaigns?

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Advertising campaigns are an excellent tool for your business to gain traction. It is common for businesses to use their business name in the back end of advertising campaigns, and increasingly popular to use competitors’ trade marks in the same way to generate new business. However, using a competitor’s registered trade mark for your own benefit can be a contentious topic. This article will discuss the legalities of using trade marked words in advertising campaigns.

Can I Use Trade Marked Words in My Advertising Campaign?

A registered trade mark gives its owner the exclusive rights to its use, so you might assume that you cannot use trade marked words in an advertising campaign. However, this is not necessarily always the case. You can use others’ trade marks in keyword bidding for advertising services, such as Google Ads campaigns.

For example, Google Ads displays both organic and paid search results. When a potential consumer searches for something in Google, ads paid for by businesses bidding on keywords will join organic results at the top of the page.

A company selling mugs might place a bid on ‘buy mugs’ or ‘cheap mugs’ or ‘gift mugs’ and their business name as keywords. This would result in their advertisement appearing as a sponsored result when someone searches these words.

It is possible for you to use a competitor business’ trade marks as keywords when buying advertisements to increase the chances of a consumer finding your business. This means that in theory, Samsung can bid on ‘iPhone’ as a keyword.

Understanding Advertising Policies

Although you can use a competitor business’ registered trade mark as a keyword when bidding on keywords, you cannot use the trade mark in the advertisement itself, as this would be visible to the consumer. Using the Samsung and Apple example above, Samsung could purchase the keyword ‘iPhone’ but would not be able to use the term ‘iPhone’ in their advertisement. Doing so might result in trade mark infringement and other claims.

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Avoid Misleading Conduct

In addition to being cautious of trade mark infringement when preparing our advertising campaigns, keep the Australian Consumer Law (ACL) at the forefront of your mind.

The ACL requires that your Google Ads campaign does not mislead or deceive the public into believing that your business is affiliated with the business of the trade mark owner. Similar to trade mark infringement, ACL allows you to use another business’ trade mark in the keyword search because it is accepted that the public will recognise you as a competitor. 

In the past, the Courts have accepted using a trade mark that is invisible to the consumer is not ‘use of a trade mark’ within the meaning of the Trade Marks Act. However, anything that suggests you have an association with a competitor, such as using a registered trade mark in the advertisement itself, may be considered misleading under the ACL.

Designing an Advertising Campaign 

When designing an advertising campaign that uses your competitor’s trade marks, avoid infringing someone else’s trade mark or breaching the Australian Consumer Law. As such, you should be extra cautious when using a competitors’ trade mark in your advertising campaign, even though it may be legal. 

The number of trademark infringement cases may increase as the practice of bidding on trademarked key terms continues to rise. The increased use of advertising campaigns makes it more difficult for consumers to distinguish between organic ads and paid ads. Consequently, businesses are more likely to mislead consumers about the origin of goods or services in advertisements. If a competitor can prove your business misled a consumer by your advertisement, you may be subject to penalties or third party claims. 

Therefore, it is best practice to engage an IP lawyer before using another business’ trade mark in any way. An experienced trade mark lawyer can help you mitigate risk by guiding you on how and when to use a competitor’s trade mark in your advertising campaign. 

Monitoring Your Trade Marks 

As the owner of a trade mark, you should keep an eye on how other businesses use your trade marks, including in their advertising campaigns. In addition, you should monitor for any use of your trade mark in advertisements and take any action necessary to stop this from happening.

You might send a cease and desist letter requesting the business remove your trade mark from their advertisement. Alternatively, you might contact Google directly and notify them of the breach of your trade mark rights. Google might then restrict certain ads on your behalf. 

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Key Takeaways

A registered trade mark gives its owner exclusive rights to its use. Notably, you can use other business’ trade marks in keyword bidding for advertising services, such as Google Ads campaigns. However, you cannot use the trade mark in the advertisement itself. Further, be aware of potentially breaching the Australian Consumer Law when using a competitor’s registered trade mark in your advertising campaign. 

If you need assistance understanding your rights to use trade marks in an advertising campaign, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

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