WebFuel is Proudly CanadainWebFuel has invited Kathryn Szymczyk, Canadian Intellectual Property Lawyer, back to blog again about another related topic from a legal perspective. Recently, Kathryn blogged about protecting your brand on the Internet. This new post is about Google’s new Canadian AdWords Policy. What do we see as a Agency that provides AdWords services in Canada? Too many Canadian Businesses not paying close attention to their trademarks on the Internet – or even understanding the laws surrounding them.

Guest Post by Kathryn Szymczyk

Advertising on the Internet. What you should know about Google’s new Canadian AdWords policy.

As a result of litigation in Canada and throughout the rest of the world, Google has recently changed its AdWords policy in Canada to be less restrictive to advertisers. However, using the trademarks of third parties can still result in your advertisements being removed or, possibly, a trademark infringement action against you. As such it is important to be careful when using trademarks registered by third parties in any aspect of your online advertising. 

Google’s New AdWords Trademark Policy for Canada

As you may know, Google AdWords permits users to pay a fee for having their advertisement appear when a certain keyword is entered into Google. Often the keywords, or AdWords, sought by advertisers are the registered trademarks of third parties. Using registered trademarks as Adwords was always permitted.  However, in order to protect itself against claims by trademark holders, Google’s original policy was to remove any advertisements which used a registered trademark in the ad text, upon request by trademark owners. As of September 14, 2010, Google will no longer remove advertisements that use trademarks registered by third parties in the ad text, provided that the advertisers fall into one of three categories. The following are the permitted uses of trademarks in ad text, according to Google’s new policy (as stated in Google AdWords Help):

  1. Ads which use the term in a descriptive or generic way, and not in reference to the trademark owner of the goods or services corresponding to the trademark term.
  2. Ads which use the trademark in a nominative manner to refer to the trademark or its owner, specifically the following:
  • Resale of the trademarked goods or services: The landing page of the ad must sell (or clearly facilitate the sale of) the goods or services corresponding to a trademark term. The landing page must also clearly demonstrate that a user is able to purchase the goods or services corresponding to a trademark.

OR

  • Sale of components, replacement parts, or compatible products corresponding to a trademark: The landing page of the ad must sell (or clearly facilitate the sale of) the components, replacement parts, or compatible products relating to the goods or services of the trademark. The landing page must also clearly demonstrate that a user is able to purchase the components, parts or compatible products corresponding to the trademark term.

OR

  • Information sites: The primary purpose of the landing page of the ad must be to provide informative details about the goods or services corresponding to the trademark term. Additionally, the landing page may not see or facilitate the sale of the goods or services of a competitor of the trademark owner.

This change in policy in Canada brings it into line with the policy in the U.S., Google’s least restrictive for advertisers. The changes will make it more difficult for trademark owners to have advertisements removed. They will not only be required to show that their trademark is being used in the text of an advertisement, but also that the use falls outside the permitted exceptions.

It is important to note, however, that Google’s policies cannot prevent trademark owners from suing Internet advertisers for trademark infringement or passing off in the Canadian courts. Both such actions provide that the defendant show that there has been no trademark use that has resulted in confusion of the average consumer as to source.

Have you considered these recent changes in your Google AdWords campaign?

Kathryn Szymczyk, Lawyer and Trade-mark Agent with the national law firm Borden Ladner Gervais LLP, has been practicing trade-mark law for the last 13 years both in Canada and in Europe. She has a special interest in the effect that the Internet has had on the use and protection of trade-marks and copyright.

Disclaimer: The contents of this Blog post, and associated opinions  are those of its Author, and do not necessarily represent the opinions of WebFuel, or its employees.

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