Can you use a competitor’s trade mark in your Google Ad, and is there a risk of infringement?
Much will depend on whether there is a likelihood of confusion. Importantly, the High Court of Singapore has confirmed that the URL displayed in a Google Ad and the linked website may be taken into consideration in this analysis.
What happened in this case?
In East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102, East Coast Podiatry Centre Pte Ltd (“ECP“) discovered that Family Podiatry Centre Pte Ltd (“FP“) used “East Coast Podiatry” in its Google Ads. An example is shown below:
Amongst other matters, ECP claimed that FP infringed its registered trade marks, including its registration for “
“.
Trade mark infringement is established if the use in Singapore of an identical/similar mark for the same or similar goods/services gives rise to a likelihood of confusion.
Was there a likelihood of confusion?
The Judge decided that there was no likelihood of confusion, and hence no infringement.
The key points in the Judge’s reasoning were:
- The URL displayed in a Google Ad can be taken into consideration. In this case, the URL was for <www.familypodiatrycentre.com> which is dissimilar to “East Coast Podiatry”.
- The website linked to the Google Ad can also be taken into consideration. In this case, the website displayed the words “Family Podiatry Centre”, a logo with the same words, and in the centre of the home page, the description “[t]he Family Podiatry Centre offers the best treatment“. All of these elements were also dissimilar to “East Coast Podiatry”.
In light of these considerations, the Judge held that there was “nothing that would cause the relevant public to think that the podiatry services offered originate from the claimant“, even though the “headline” of the Google Ad contained the words “east coast podiatry” (as circled in the image above).
What does this mean?
Brand owners relying on Google Ads will be reassured to learn that using a competitor’s trade mark in a Google Ad does not automatically amount to infringement. However, if other aspects of the Google Ad (including the material on the website) could cause the public to be confused about whether there is a connection between the businesses, there could potentially be an infringement risk.
Meanwhile, brand owners that discover competitors using their trade marks in Google Ads should be careful in taking action, as they might in turn face a counter-claim of groundless threats of infringement. Professional advice should be sought in developing a strategy for enforcement.
If you have any questions, please feel free to reach out to Esther Seow at ESeow@dcc.com.