Can I Use A Competitor’s Trade Mark In My SEO Strategy?

The field of trade mark law is complex and wide-ranging and many different cases covering a variety of industries, disciplines and contexts have ended up being settled by a court ruling.  But despite all these precedents – and despite the explosive growth in online communications – very few cases involving the use of a competitor’s trade mark in a search engine optimisation (SEO) strategy have come before the courts.

One of the most significant cases in Australia was heard by the full Federal Court back in 2014 (Liftshop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75 (Lift Shop decision).  The matter under consideration was whether advertisers Easy Living Home Elevators Pty Ltd (Easy Living) using a term that appeared similar to a competitor’s registered trade mark in the text of an online advertisement were liable for trade mark infringement.

Easy Living had used the words ‘lift shop’ in its SEO strategy – as a Google Adword, in the title of its website and in the content of its homepage.  When internet users entered the search term ‘lift shop’ in their browsers, the results displayed the website titles and URLs of both Liftshop and Easy Living in close proximity to one another as well as the websites of other businesses which had also used the words ‘lift shop’ in their own website titles.

Lift Shop argued that Easy Living’s use of the words ‘lift shop’ amounted to trade mark infringement, passing off and misleading and deceptive conduct. Notably, Lift Shop’s registered trade mark is for a composite logo mark and not simply the words Lift Shop.

After the judge ruled against Lift Shop on all three counts, the applicant appealed the matter to the extent that it dealt with trade mark infringement.  The appeal was turned down in a unanimous judgement by the Full Federal Court which concluded that the words were not being used as a trade mark given the context in which they were used. That is, Easy Living did not use the words ‘lift shop’ in order to distinguish their business’s services from others.

In the Lift Shop case, Easy Living was not deemed to be associated with Lift Shop through the use of the keywords ‘lift shop’ as the words were used descriptively throughout the industry.

However, in another case (Australian Competition and Consumer Commission v Trading Post Australia Pty Ltd [2011] FCA 1086), the use of a competitor’s keywords in online ads was deemed to be misleading and deceptive as the keyword used was distinctive in nature. For example, Trading Post was displaying ads that featured “Charlestown Toyota” and “Kloster Ford”, which the ACCC alleged misled consumers to believe Trading Post had an official association with the relevant car brand, which was not the case.

Another interesting precedent was set in 2016 (Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255) when the Federal Court found that the use of a competitor’s trade mark as a keyword in Google Ads did not constitute trade mark infringement nor was it likely to mislead or deceive consumers.  In her judgement, Justice Katzmann did ‘not accept that the use of a sign which is invisible to the consumer is used as a trade mark within the meaning of the Trade Marks Act.’

However, these precedents do not mean that the use of a competitor’s trade mark in online advertising is a safe bet.

In the Lift Shop decision, while the court did find that the words ‘lift shop’ were used descriptively and not as a trade mark and that they had little distinctive value in setting the goods of Lift Shop apart from those of its competitors, advertisers should always proceed with caution and seek expert advice if there’s any uncertainty.

If a company believes its rights are being infringed because its trade mark is being used by a competitor in their SEO activities, it may be able take action in several ways:

• File a court application under the Trade Marks Act 1995 for trade mark infringement
• Consider court action under the Australian Consumer Law for conduct that is misleading or deceptive (or likely to mislead or deceive)
• Lodge a complaint with Google (through the Google Adwords Trademark Policy)

A trade marks attorney can advise on options available to trade mark owners before formal legal action is required. In the event a dispute is not resolved, your trade marks attorney can assist in briefing appropriate litigation solicitors to take the next steps.  There is real risk involved in using a competitor’s keyword in online ads, particularly since the introduction of Google’s dynamic keyword insertion tool.   If the keyword is not deemed to be wholly descriptive, the use of it will be more likely to be deemed an infringement of a trade mark.

In answer to the question of whether you can use a competitor’s trade mark in your SEO strategy, Mark My Words Trademark Services’ advice is that you should always be aware of the risks of trade mark infringement when planning your online marketing activities (eg using their trade mark in the text of an online ad, in the URL or the headline of the website) – even if you believe that the trade mark is purely descriptive in nature or is ‘invisible’ to consumers.  Businesses also need to be aware of the strategies engaged in by advertising firms or agents that act on the business’s behalf. Ultimately, the business will be the liable party in the event of trade mark infringement so business owners should monitor the ads their agents run on their behalf. This is applicable to the general SEO strategy, it may be different for your Google Ads strategy.

Similarly, if you own a trade mark, you should be extremely vigilant about monitoring its use online and seek professional advice if you suspect any infringement, passing off or misleading and deceptive conduct.