Trademark Infringement in Search Advertising: The Law and Platform Policies

In search advertising you often see ads placed against a competitor’s company name, service name or product name.

But placing ads using a word another company has registered as a trade mark can infringe that trade mark and carry a penalty.

So this article explains the trade mark considerations and the ad policies in search advertising, from two sides.

• ・Readers considering placing search ads using another company’s trade mark
• ・Readers whose own trade mark is being used in another company’s search ads

Summary
・A trade mark right is the exclusive right to use a registered name, logo and so on
・Bidding on the keyword is fine; putting another company’s trade mark in the ad text is not
・Where there is infringement, ask the advertiser first, then you can complain to the platform
・Breaches carry legal risk, including criminal penalties and fines, so take care

1. What a trade mark right is

First, what sort of law a trade mark right actually is.

A trade mark right is

an exclusive right granted over a mark used for goods or services. It extends not only to the identical mark and designated goods but to a similar range. What can be protected as a mark includes words, figures and symbols, and also three-dimensional shapes, sounds and more. The term is ten years, renewable on application.

Source: What a trade mark right is

In short, it is a right whose purpose is to protect the “mark” attached to goods or services. And it can only be asserted once an application has been filed with the Patent Office and registration granted.

It means a party with no legitimate right or reason to use a registered mark using it in the course of trade, for the designated goods or services it is registered for.

Source: What trade mark infringement is

“In the course of trade” — that is, use in business — is what infringement covers.

Where infringement is found, the Trademark Act provides the following penalties.

(Offence of infringement)
Article 78 A person who has infringed a trade mark right or an exclusive right to use (excluding a person who has committed an act deemed to constitute infringement under Article 37 or Article 67) shall be punished by imprisonment for not more than ten years or a fine of not more than ten million yen, or both.

Source: Trademark Act

So if you place a search ad using a registered trade mark and it amounts to infringement, a penalty is possible, and care is needed.

2. If you want to advertise on another company’s trade mark

Bidding on the trade mark as a keyword

The first case is bidding on the trade mark as a keyword — for example, as follows.

Suppose Company A has registered the product name “Drink A”.
Company B, selling “Drink B” with a similar effect, places its search ads on the keyword “Drink A”.
Now when a consumer searches “Drink A”, competitor B’s ad appears as well.

This is the case of Bidding on the trade mark as a keyword.

To put the conclusion first: there is no legal problem.
It also falls outside the restrictions in Google’s and Yahoo!’s ad policies, so it can be placed without trouble.

▽Google Ads policies

▽Yahoo! guidelines and terms

Using the trade mark in the ad text or description

The second case is including the trade mark in the ad text or description.
For example, as follows.

Competitor B uses the words “Drink A” in the body of its search ad, as in “cheaper and more effective than Drink A”.

This is the case of Using the trade mark in the ad text or description.

To put the conclusion first: using a trade mark without permission is very likely to infringe.

If a complaint restricting the use of that keyword is made through Google or Yahoo!, the words “Drink A” can no longer be used in the ad text.

3. If your own trade mark appears in another company’s ads

This section covers two cases, for readers whose registered trade mark is being used in another company’s ads.

When the trade mark is being bid on as a keyword

Bidding on a trade mark keyword is not in itself unlawful, nor does it breach Google’s or Yahoo!’s ad policies, so it has to be resolved between the companies.

In this case, contact the advertiser directly and ask them to stop bidding on the keyword in question.

Three things to keep in mind when you do.

• ・With search advertising it is quite possible the ad is appearing unintentionally, so word it so that someone who did not mean to do it is not put out by reading it
• ・Write the request so that it costs the other company as little effort as possible
• ・Remember it has no legal force: it is a gentleman’s agreement, asking in good faith for something they need not do

Here is the request we actually use. If you are planning to make one, do use it as a reference.

[Company name]
To whoever handles search advertising

Forgive this unannounced approach.
My name is [name], of [company].

I am writing to ask that certain keywords be added as exclusions in the search advertising your company places on Google and Yahoo!.

At present, a search for “○○” shows your advertisement.
Service URL: http://www.○×△.co.jp/

We assume the placement is unintentional, but if it continues there is a risk of confusing users. We would therefore be grateful if you could add the keywords below as phrase-match exclusions.

〇〇
〇〇
〇〇
〇〇
(on both Google and Yahoo!, please)

We will likewise add your own brand keywords as exclusions on our side, so we would be grateful for your keyword list.

Again, our apologies for approaching you unannounced.
We are sorry to make the request by email, and would be grateful for your consideration.

When the trade mark is used in the ad text or description

Where your trade marked words appear in another company’s ad text, a complaint to Google or Yahoo! can restrict that company’s use of the registered keyword in its ad text.

You can file a trade mark complaint from the links below, so do make use of them.

Note, however, that who may file is limited and documents and information are required, so
check in advance that you meet the requirements.

■Filing with Google

▼Complaint form

https://services.google.com/inquiry/aw_tmcomplaint

▼Who may file

• ・The trade mark owner
• ・A registered attorney named in the trade mark registration
• ・An agent at the head office of a parent company that holds the trade mark
• ・Another entity or individual with the owner’s express permission (a subsidiary, a branch, an attorney not named in the registration, a media agency, a dealer, a franchisee and so on)

▼What to prepare in advance

• ・Details of the advertisers to be restricted or permitted
• ・The trade mark registration number

■Filing with Yahoo!

▼Complaint form

https://form-business. yahoo.co.jp/claris/enqueteForm?inquiry_type=brand_term_limit

▼Who may file

• ・The owner of the mark, or an agent the owner has authorised

▼What to prepare in advance

• ・An electronic copy of the applicant’s business card
• ・An electronic copy of the registration certificate or the trade mark register entry
• ・Details of the advertisers to be restricted or permitted

4. In closing

This article has covered the trade mark considerations and ad policies in search advertising.

Do check whether you are infringing another company’s trade mark, or breaching Google’s or Yahoo!’s ad policies.

And when you use another company’s trade mark in a search ad, bear in mind it can lead to trouble with the competitor that owns it, and can damage your own brand — so judge it carefully.