Can the use of a competitor’s name in your Google ad words amount to intellectual property / trademark infringement and passing off?
Maybe.
In East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102, Dedar Singh Gill J considered this issue.
In considering whether there was trade mark infringement and passing off, the Court considered the test laid down by the ECJ in the Google France v Louis Vuitton; Viaticum; CNRRH case specific to the context of internet keyword ads:
“whether the advertisement does not enable normally informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to in the advertisement originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party”.
On the facts, the Court considered that it could, in deciding whether there was a likelihood of confusion, take into account the display of the defendant’s website URL in the ad, and also the website which the ad linked to (which is considered a part of the advertisement as a whole).
Upon this analysis, the Court concluded that there was no likelihood of confusion. Because the relevant public would, upon clicking on the ads, be immediately aware that the defendant’s website is not associated with the claimant.
The Court considered that a typical reasonably well informed and reasonably observant internet user will note the website to not be the claimant’s and would not simply proceed to book an appointment by clicking on the quick link in the ad and bypass the defendant’s website entirely.
As for the tort of passing off, the Court considered that there is no misrepresentation giving rise to a likelihood of confusion for the same reasons.
The Court took pains to emphasise that this case turned on its own facts. It is possible that there are cases of internet advertising where there is a finding of trade mark infringement or passing off.
Comments
– If a competitor is using your trade mark or business name in their internet or other ads, riding on your goodwill, it is plausible to go after them still. As always, it depends on the facts. E.g. if the competitor’s ads only go straight to a booking or an order page without more, or if the ads go to a website or webpage which may give rise to confusion as to similarity with your business, these could be actionable.
– IIRC, this is probably the 1st published Singapore decision on trade mark infringement and passing off in the context of internet advertising. In cases overseas, we’ve seen cases where defendants are found to be infringing. E.g. famously, the Lush (Cosmetic Warriors) v Amazon case where a person searching the word “Lush” on Google would see an ad that linked to Amazon’s website selling similar products but not Lush’s. Further, where a person types the word “Lu” into Amazon’s website search bar, a drop down menu would show up offering “lush bath bombs” etc. and if clicked would go to a webpage offering similar products but with no reference to the Lush item being unavailable. In that case, the UK Court held Amazon to be liable for infringement.
– Advertisers and businesses need to do due diligence in making their internet & other advertisements. Do conflicting or similar mark or business name searches when considering ad keywords. Also, you may need to even proactively exclude competitors’ names. In an Austrian case, a German company used Google’s dynamic search ads which automatically displayed a competitor’s trade mark in the ad even though the company never requested it and did not even know the ad would contain the mark. It was nonetheless found liable for infringement.