Do you use a competitor name in your Google keywords? BEWARE

A recent legal case illustrates the dangers of buying keyword ads on Google in the name of a competitor – especially if that competitor has a trade mark.

Victoria Plumb was a registered trade mark, and had been in place for many years. The defendant, Victorian Plumbing, had only been in operation a few months but had been aggressively buying the keyword ‘Victoria Plumb’ on Google.

The judge had no difficulty in finding that there was a breach of trade mark.

By searching for Victoria Plumb or Victoria Plum consumers were specifically looking for the claimant’s products; given the high click-through rate to the defendant’s website, and the high degree of similarity between their names, it was held that confusion was not only likely – it was actually occurring on a significant scale.

Interestingly, Victoria Plumb had responded by buying the keyword ‘Victorian Plumbing’ and so the defendant brought an action in passing off.

Although they had only been in operation for a few months, the judge decided that the business had acquired sufficient goodwill to manage a passing-off claim; there was nothing in the Google page ads to indicate that the parties were not connected and so there was a propensity for confusion. A substantial proportion of customers were likely to have been misled into believing that the claimant was therefore connected to the defendant and that was a misrepresentation.

At the end of the day, both parties succeeded with their claims.

Accordingly, the case is a warning that the purchase of ad words in the name of a competitor can be a risky business (and if the competitor has a registered trade mark then liability will be even more difficult to avoid). 

Victoria Plum v Victorian Plumbing [2016] EWHC 2911 (Ch). Source: Olswang.

Quoted from: The Practical Lawyer