There have been recent High Court decisions on the question of whether a party acquiring and utilising similar or identical google Ad Words to another competitor’s trademark constitutes infringement of the Intellectual Property in the trademark owned by the competitor.
Two recent examples concern Moola v Wallet Wizard and Intercity v Naked Bus. The High Court in both instances has refused on an interim basis to grant an injunction to prevent the owner of the Ad Words continuing to use those Ad Words even though the specific words Moola and Intercity are trademarked by the other party.
The High Courts’ position was that the Ad Words are not seen by the public when they enter a search request and therefore the public are not able to link the use of the Ad Word to the registered trademark. There is no evidence that the internet user sees the use of the Ad Word as they have no access to it inside the google algorithm.
Although these were only interim decisions it is an important reminder to those intending to protect their Intellectual Property in the digital age that mere registration of a trademark on its own may not be sufficient protection particularly in the search engine arena.
A competitor’s acquisition of key Ad Words can undermine the intellectual property protection in a trademark particularly in terms of online searching.
If you require any advice or further information on the matters dealt with in this publication please contact the lawyer at Farry and Co. who normally advises you, or alternatively contact:
Paul Farry
pfarry@farry.co.nz
09 353 6671
The information contained in this publication is intended as a guide only. It does not constitute legal advice and should not be relied upon as such. Professional advice should be sought before applying any of the information to particular circumstances. While every reasonable care has been taken in the preparation of this publication, Farry and Co. does not accept liability for any errors it may contain.