Liability Win For Our Client on Use of Competitor’s Trademark on Google Ads Trademark Use in Google AdWords Is Trademark Infringement?

Peter Adediran’s specialist niche area of practice is intellectual property law – both contentious and non-contentious – as it relates to digital works including trademarks; copyright; patents and database rights PAIL® Solicitors. Read more on PAIL’s ® Resource Library
 
PAIL® recently obtained judgment on liability plus costs for our client in the UK Intellectual Property Enterprise Court. For more information about the court see the IPEC Court Guide.
 
The case concerned trademark use in Google Ads. Although Google have an ad policy requiring that Google Ads don’t infringe on third-party trademarks businesses still actively infringe other business brands in their Google Ad campaigns trading on the reputation of other business brands and/or diluting the brand of other businesses through overuse.
 

Businesses that try to profit off the names of their competitors should think again.

 
On the 18 September 2018, PAIL Solicitors got default judgment on behalf of the Claimant – in its case for passing off and trademark infringement against two defendants. PAIL® obtained an order for costs on the 06 November 2018 on behalf of the claimant for £18,865.00.
 
EMarks

EMarks

The claimant is a designer, producer, supplier and installer of fine quality plaster cornices covings and plaster mouldings and has carried on business under the name CORNICES CENTRE since December 2003. Our client, the claimant, is also the owner of European Union Trade Mark Registration Number 017451436 and 017865420 for CORNICES CENTRE registered in classes 16, 19, 25, 35, 37, 35 covering, among other things, building and repair services; advisory services relating to the renovation of property services; advertising, marketing and promotional services; decorative mouldings (non-metallic) Cornices and Covings (non-metallic) goods (the ‘Trade Mark’).
 
The defendants are providers of bespoke plasterworks including cornices and covings in London. They are competitors to our clients’ business also located in South East London within close commercial geographical proximity of our client.
 
It was alleged by the claimants that the defendants infringed the claimant’s registered trade mark by the use in the course of trade of a sign – CORNICE CENTRE – which is identical to the registered trade-mark CORNICES CENTRE in its AdWords text ads on the GOOGLE Search Network as part of its Headline text in relation to goods and services which are identical to those for which our client’s trademark is registered.
 
The case is interesting to the building community, and the wider business world, because it involved the following hot issues:
 

• Previous cases particularly the well-known cases of Office Cleaning Services v Westminster Window and General Cleaning: HL 1946 and A&E Television Network v Channel 4 Television Corporation 2011 held that where a trader adopts words in common use for his trade name some risk of confusion is inevitable – so adopting CORNICES CENTRE as trade mark is risky as it could be perceived as trying to unfairly monopolise the words. The consequence of this is that where a mark is largely descriptive small differences may suffice to avoid confusion. Was the small difference of CORNICE not CORNICES enough to avoid confusion?
 
• What is enough to constitute trade mark infringement in a Google Ad Word campaign? This is a hot issue in the intellectual property and Internet business world.
 
• Is there material difference in the trademark sense between the singular and plural form of the word CORNICES in the mark CORNICES CENTRE and – CORNICE CENTRE – so that they are either separate marks or are regarded as the same mark?
 
We were ready to deal with all these issues with regards to liability for a result in favour of our client had this case gone to trial. Businesses that try to profit off the names of their competitors should think again.
 
By Peter Adediran
21. 11. 2018

 
This article details the facts regarding the claim as to liability of a trademark infringement case relating to Google Ads in which Mr Peter Adediran represented the Claimant. If you are seeking advice on bringing or defending a trademark infringement claim and have read this article, you must take the opportunity to go and seek professional legal advice from a solicitor or barrister. The information and any commentary on the law contained on this web site is provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL® Solicitors. The information and commentary do not, and are not intended to, amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.

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