Protecting brands on Google: a practical guide

Ensuring visibility on search engines’ result pages has become a core component of any online marketing strategy. Consumers not only rely on search engines to undertake common pre-purchase research, but they are also incredibly brand conscious: in 2010 seven of the ten most popular search terms on Google.com.au were brand names rather than product descriptors, while in 2009 all ten of the most popular search terms were single-word brand names.¹

Given the importance of search marketing, brand owners have reason to be concerned when searches for their brands return links to infringing or unauthorised websites. The challenge of removing such offending content from search result pages is exacerbated by their increasing complexity; a modern-day search result page is likely to combine multiple data sources and result types with detailed user information to present an individualised list of relevant websites and links.

This article provides a practical guide for brand owners to addressing infringing search results by distinguishing the typical components of a search results page: organic results, location results and sponsored listings. It will show how these results can infringe trade marks and related rights, and what counter-measures can be taken against such infringements.

With ninety-three per cent of all web searches in Australia occurring on Google’s various websites,² the search giant’s products and policies are a natural focus for intellectual property enforcement efforts, and are also the focus of this article. It is worth noting however, that Australia’s other major search engines, Microsoft Bing and Yahoo!, offer similar search tools and have similar policies regarding the infringement of intellectual property and other rights.

The anatomy of a search results page

Search engine result pages (which are often referred to as ‘SERPs’) combine a variety of different search results related to a user’s query. Understanding the source of each type of result is an important first step in determining the most effective manner in dealing with infringing content.

1. Organic search results are links to web pages that the search engine has deemed the most relevant to the user’s search term according to complex proprietary algorithms that analyse the content of millions of web pages containing the user’s search term. These results are referred to as ‘organic’ or ‘natural’ because their inclusion and position on the search results page is free and based solely on Google’s assessment of the quality and relevance of each page to the user’s search term.

   A website’s organic ranking, and the website summary shown by Google for the organic search result, can be influenced by embedding particular instructions within the underlying source code of a web page. These “tags” are used by search engines to classify a website’s content and are not ordinarily visible to human users. Examples include meta description and meta keyword³ tags, image alt attributes (which are used to provide textual descriptions of images), and the nascent technology of microformats. These hidden instructions, which are often referred to collectively as “meta tags”⁴ can be employed cynically by website owners to ensure their websites return search terms unrelated to the visible content of their website.

2. Location search results are derived from a database of addresses that Google has amassed from a variety of sources, including the text of web pages it has indexed and its newly-launched Google Places local business directory.

   Under the program every business in Australia has been provided with a “Google Place Page” that contains information such as its address, website, opening hours, reviews from users and even photos of the business. By verifying their identities with Google, business owners can “claim” their listing and alter or augment the information contained on their Place Page.

   Google draws on its database of business addresses and location data when a user performs a location-specific web search, such as “florists in sydney” on either Google.com.au or one of its mapping services such as Google Maps.

3. Sponsored links are advertisements that businesses have paid to have displayed on the search results page for a particular search term. These listings appear on the right hand side (and occasionally at the top) of search results pages and are visually distinguished with the label “Ad” and a coloured background.

   Google’s self-service system for placing these sponsored listings on its search result pages is known as Google AdWords. The system allows advertisers to create simple text-based advertisements (featuring a title, two short lines of text and a destination website address) and insert them on search results pages for targeted keywords. Advertisers can target their advertisements to appear against searches that contain a nominated keyword, such as a brand name or product type, as well as prevent their advertisement from appearing against searches for nominated ‘negative keywords’. Advertisers can further refine their desired audience by preferred language, location and even whether they are accessing Google from a phone, tablet or PC.

   Where multiple sponsored links are to be shown on a SERP, their relative position is determined by the maximum amount of money each advertiser has offered to pay if a user clicks on their advertisement. For this reason sponsored listings are also commonly referred to as pay-per-click (PPC) advertising.

The following screenshot of a Google search results page illustrates the placement of organic, location-based and paid listings on a search results page for the keywords “air conditioning” on a Melbourne-based computer:

Responding to trade mark related infringements on a Google SERP

There are a number of ways in which brand owners may find their registered and unregistered trade mark rights infringed in Google’s search results. Organic search results may include links to, and extracts of, infringing websites that sell goods that infringe the brand owner’s copyright, counterfeit goods or otherwise use the trade mark in an unauthorised manner. Even where infringing material is not visible on a competitor’s website, the website’s meta tags may contain references to the mark, causing the site to be returned as an organic result when a user searches for the brand name. The descriptive text of Google Places business listings, which will often be combined with relevant web pages on a Google search results page, may also reference trade marks in an infringing or misleading manner.

Sponsored links shown alongside organic search results may be of concern to brand owners for two reasons: the text of an advertisement references the trade mark in an unauthorised fashion, or the advertiser has paid to have an otherwise infringing advertisement listed when a user searches for the brand in question.

Before advising an aggrieved trade mark owner on options for removing infringing content from a Google SERP, the type and source of the content must be identified:

1. if the offending content has been submitted by an advertiser to Google as part of its Google Places or Google AdWords programs, then aggrieved trade mark owners may submit a request to Google to have listing removed under Google’s trade mark infringement policies;
2. if the infringement occurs in website extracts generated for organic listings (which are referred to as “snippets”), or if Google will not take action against a sponsored or location-based listing under its limited infringement policies, direct action against the advertiser or website owner or advertiser may be necessary.

A note on copyright infringement

While it is beyond the scope of this article to examine Google’s comprehensive copyright complaints procedure, it should be noted that Google will remove both organic web search results and AdWords sponsored links to material that infringes copyright or promotes the sale of infringing goods.⁵ This policy, which is based largely on the search engine’s obligations under the US Digital Millennium Copyright Act, provides an alternative mechanism for removing organic web search results that infringe both trade mark rights and copyrights.

Lodging trade mark related complaints with Google

Google will intervene to remove sponsored listings and location listings in a limited set of circumstances. The search engine’s response varies depending on the Google product in question (such as AdWords or Google Places) and the country to which the advertisement is targeted.

Google AdWords: infringing sponsored links

Google will act on complaints⁶ regarding infringing use of both registered and unregistered trade marks in Google AdWords sponsored links. Note, however, that this does not extend to marks that include some kind of design element, such as logo marks. No Google account is required to lodge such complaints, and the complaints can be lodged by a trade mark owner or an authorised representative. Complainants are required to provide the following information for each trade mark about which a complaint is lodged: the word mark, the country in which the rights are claimed, whether the mark includes any design elements and the trade mark’s registration number (if any).

Complaints can either be made in relation to specific AdWords advertisements that infringe a trade mark right, or in general about a large number of advertisements. Where a general complaint is made, Google will investigate all potentially infringing advertisements on its network and add the trade marks to a blacklist of marks that may not be used in newly created advertisements. To ensure that authorised licensees or resellers may continue to use trade marks despite these general complaints, Google provides a method of identifying authorised licensees by their Google AdWords account numbers.⁷

Depending on the country being targeted by the infringing advertisement, Google will remove advertisements that either contain the trade mark or target keyword searches for the trade mark:⁸

• Across most jurisdictions, including the USA, Google will act on complaints about AdWords advertisements where the text of the advertisement (except the destination web address) contains a trade marked term, although Google’s policies also permit advertisers to use trade marks in relation to information, parts or resale of a trade marked product.
• In the European Union, Google will also act on a complaint where the AdWords advertisement is targeted at a trade marked search term and the combined effect of the advertisement text (which may not necessarily contain the trade mark) and the targeted keyword may confuse the user by, for instance, suggesting an affiliation between the advertiser and the trade mark owner. However Google will not act in such circumstances where the trade mark is used in a descriptive or generic way, or where it is used to advertise a compatible or resale product.
• In some Asian, South American and Pacific nations, including Australia and New Zealand, Google will investigate any advertisement where the trade mark is used in the advertisement text or search keywords at which the advertisement is targeted.

There is no formal appeal process available to AdWords advertisers who find their sponsored links disapproved or their account terminated as a result of a trade mark complaint, however advertisers can contact Google’s customer service centres if they believe they have been unfairly affected by a complaint.

Google AdWords: advertising of counterfeit goods

Trade mark owners may also lodge a complaint with Google where an AdWords sponsored link does not infringe its rights, but where the advertiser’s website offers counterfeit goods for sale. Counterfeit goods are defined under the AdWords policy as those which:

1. feature marks or logos that are identical to or substantially indistinguishable from the trade mark of another;
2. mimic brand features in an attempt to pass themselves off as genuine; or
3. promote the goods as replicas or imitations of the original.

Google will investigate all such complaints within 24 hours⁹ and disable the ad or terminate the account of the advertiser.¹⁰ The complainant’s contact details may be forwarded to the advertiser.

Google Places and Google Maps

Google’s content policy for Google Places listings¹¹ includes a general prohibition against infringing the “intellectual property rights of others”, including trade marks and other proprietary rights. The policy also contains an express prohibition against impersonation of others or content that is, or intends to be, misleading. Business owners who violate these policies face removal of their listings or suspension of their accounts.

Until a Google Place page is “claimed” by its owner through a process of identity verification, any Google user, including aggrieved brand owners, can edit the content of a Google Place page to correct misleading or infringing information. Once a Place page has been claimed, however, content violations must be reported by clicking on the “Report a problem” link that appears at the bottom of each Place page. It may take up to a month for Google to investigate and respond to these reports, and even longer for corrections made to Google Places listings to be reflected in Google Web Search results pages.

Direct action against website owners

Where Google will not act to remove an infringing element in its search results — either because it is an organic search result derived from the content and meta tags of the destination website or it is a sponsored link that lies beyond the grounds upon which Google will investigate infringement complaints — brand owners can, at least against Australian infringers, rely on more traditional methods of trade mark protection such as claims for injunctive relief against the website owner under the Trade Marks Act 1995 (Cth), misleading and deceptive conduct under the Australian Consumer Law and the related tort of passing off. Once an infringing web site owner has amended the web pages in question, the trade mark owner can submit a request to have the offending organic search listing updated.¹²

Trade mark infringement

An unauthorised website owner will infringe an Australian registered trade mark if they use the trade mark in relation to the class of goods for which the trade mark is registered.¹³ In this respect the infringing website of an online retailer selling counterfeit widgets is no different from the infringing signage of a bricks-and-mortar retailer selling the same goods. Likewise the infringing text of a Google AdWords sponsored listing will be judged against many of the same criteria as a newspaper advertisement.

When such analogies to offline activities break down, questions arise about the nature of trade mark infringement on a search results page. For instance, is it an infringing use of a competitor’s registered trade mark to include it in the meta tags of an otherwise benign website, causing the competing website to appear in search results for the registered mark? In a similar vein, is it an infringing use for a Google AdWords advertiser to target (otherwise uninfringing) sponsored links for their own products to searches for a competitor’s trade mark?

These questions remains largely unanswered by Australian Courts, though there is some guidance to be found in the 2010 Federal Court decision of Mantra Group Pty Ltd v Tailly Pty Ltd (No 2)¹⁴ in which the Mantra Group sought relief against the unauthorised use of its registered CIRCLE ON CAVILL apartment complex trade marks on Tailly’s websites. While the case ultimately turned on Reeves J’s finding that visible components of Tailly’s websites infringed the Mantra Group’s registered trade marks, it is notable that His Honour’s approach was to examine whether the allegedly infringing uses of the CIRCLE ON CAVILL mark “amounted to their use as an emblem or a badge of origin”. The relief granted by Reeves J included a restraint on Tailly’s use of the mark in “hidden” meta tags on its website, and in keywords targeted by Google AdWords sponsored listings.

In a subsequent matter before Finklestein J of the Federal Court¹⁵ the targeting of AdWords sponsored links to trade mark keywords was declared to be both an infringement under the Trade Marks Act and a violation of various consumer protection provisions of the Trade Practices Act 1974 (Cth).¹⁶ Although His Honour granted injunctive relief against further infringements, it should be noted that the respondents did not file an appearance and the issues were uncontested.

Trade practices claims and passing off

As Kennards Hire v Caruso demonstrates, consumer protection claims under the Australian Consumer Law (ACL),¹⁷ and the related tort of passing off, are often brought alongside trade mark infringement claims, or to protect unregistered trade marks from unauthorised use. In particular, section 18 of the ACL prohibits any person from, in the course of trade or commerce, engaging in conduct that is misleading or deceptive while section 29 prohibits the making of misleading claims concerning the sponsorship, affiliation or approval of goods and services.

The circumstances in which the use of a competitor’s mark in meta tags or sponsored listings may contravene these provisions of the ACL, and the degree to which search engines such as Google should be held liable for the infringing advertisements they host, is currently being considered by the Federal Court in Australian Competition & Consumer Commission (ACCC) v Trading Post Australia Pty Ltd & Anor.¹⁸ Among the remedies being sought by the ACCC are injunctions restraining Google from publishing sponsored links of advertisers representing an association, sponsorship or affiliation where one does not exist and from publishing search results that do not expressly distinguish advertisements from organic search results. The Federal Court has reserved judgment in the matter, but a decision is expected soon.

Shifting sands

Google’s internal procedures for dealing with trade mark infringements can provide a cost-effective, if incomplete method of dealing with infringing sponsored and location-based listings, and provide a useful step between demanding action directly from the infringing party and instituting proceedings. The making of general complaints about all advertisements using a trade mark can also provide a measure of preventative protection to brand owners.

Where Google will not intervene to remedy an infringement, direct action in Australia against the advertiser can be complicated by jurisdictional issues where the advertiser is an overseas entity, as well as the paucity of relevant Australian judicial commentary. Unlike the United States and the European Union, where the Courts have given far greater consideration to the infringing nature of trade marks employed as meta tags and sponsored link keywords,¹⁹ the Australian position is less clear. The outcome of ACCC v Trading Post case will hopefully provide greater certainty with regard to trade practices claims against infringing advertisers and the search engines that facilitate their conduct. How Google’s policies may change to this decision, and future decisions on the ability of AdWords keywords to infringe trade mark rights, remains to be seen.

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Endnotes

1. See Google’s annual “Zeitgeist” reports for 2010 http://www.google.com/press/zeitgeist2010/regions/au.html and 2009 http://www.google.com/intl/en_us/press/zeitgeist2009/regional.html#australia.
2. According to Internet measurement company Experian Hitwise, for the four week period ending 9 July, 2011.
3. Meta keyword tags, which allow website owners to nominate keywords related to their website, have been misused so often by spam advertisers and trade mark infringers that they are now effectively ignored by Google and most other search engines.
4. For technical reasons beyond the scope of this article it is incorrect to refer to all hidden classification tags as “meta tags”. For the consistency with other legal commentary on the subject, however, this article will employ the same terminology.
5. Complaints about organic web search results that infringe copyright can made at https://www.google.com/webmasters/tools/dmca-notice?pli=1&hl=en while complaints about Google AdWords sponsored links that infringe copyright can be made at http://adwords.google.com/support/aw/bin/request.py?hl=en&contact_type=lr_dmca&rd=1.
6. Complaints can be made at https://services.google.com/inquiry/aw_tmcomplaint.
7. The details of Google AdWords users authorised to use a trade mark subject of a general trade mark complaint can be lodged with Google at https://services.google.com/inquiry/aw_tmauth.
8. For further detail on the regional differences in the Google AdWords trade mark policy, see http://adwords.google.com/support/aw/bin/answer.py?hl=en&answer=144298.
9. See http://googlepublicpolicy.blogspot.com/2011/03/keeping-counterfeits-out-of-ads.html
10. Complaints can be made at http://services.google.com/inquiry/aw_counterfeit.
11. See http://www.google.com/support/places/bin/answer.py?hl=en&answer=176519
12. Removal requests can be submitted at http://www.google.com/webmasters/tools/removals.
13. Section 120(1), Trade Marks Act 1995 (Cth).
14. [2010] FCA 291. (‘Mantra v Tailly’).
15. Kennards Hire Pty Limited v Caruso Nominees Pty Ltd & Ors, unreported judgment of Finkelstein J (24 October, 2010), Federal Court of Australia (‘Kennards Hire v Caruso’).
16. The relevant consumer protection provisions contained within sections 52 and 53 of the Trade Practices Act 1974 are now contained within section 18 and 29 of the Australian Consumer Law, discussed below.
17. Competition and Consumer Act 2010 (Cth), Schedule 2.
18. (‘ACCC v Trading Post’).
19. For a useful comparison of the current position in Australia, the United States and the European Union, see Dr Warwick A Rothnie, ‘Of Keywords, Adwords and Trade Mark Infringement’, Intellectual Property Forum, Issue 83 (December 2010), page 32.

This article was first published in Issue 6, Vol 14 of the Internet Law Bulletin and is reproduced here with the permission of LexisNexis.