Dell’s latest Google AdWords campaign made Toshiba and Acer very annoyed. Why? Apparently Dell registered the phrases “Acer notebook” and “Toshiba notebook” on Google’s advertising program, so people entering these search terms into Google’s Australian search engine would be directed to Dell’s website.

What an interesting legal football such registered search terms are. They’ve been tested by courts around the world with wide-ranging interpretations and conflicting decisions. The French have been harsh, the Brits have been lenient and the US have been a bit each way. Here in Australia these issues haven’t really been tested yet.

Back to Dell. According to an article in the Australian newspaper, “Acer’s lawyers will issue sternly worded letters to Dell and Google”. Scary stuff indeed.

The real kicker is that whilst Dell’s conduct raises the possibilities of trade mark infringement or breaches of trade practices legislation, these could be difficult to establish if: (a) the competitors mark is not being used “as a trade mark”, or (b) if there is no misleading or deceptive conduct involved.According to Google, it will only protect registered trademarks when it receives a complaint from a trademark owner. Seems like sticking your fingers in your ears, doesn’t it?

Tasks to stop abuse

This style of ambush marketing (where one trades off the back of, or deliberately very close to, a competitor’s brand) is not exactly new. However, as the stats alone reveal, internet advertising has exploded. At a recent Webinar held in the US, these issues were bundled under the phrase “online brand abuse”. The practical takeaway is that online brand abuse can be minimised if companies and organisations take some proactive steps.  For example:

      • Sponsored Links Monitoring sponsored search engine terms (such as Google’s Adwords) to ensure your brands are not being inappropriately sponsored by competitors. Remember, Google won’t do it for you.
      • Domain Registrations Registering your brands in alternative domains to block cyber-squatters eg .org, .biz or .info
      • Website Monitoring Monitoring competitors’ Web pages and metadata for any unlawful use of your brands. Unlawful use might involve defamatory statements, misleading representations, breaches of confidentiality, or use of your brand as someone else’s trade mark
      • Programs & Professional Services Use of programs, techniques or watching services to monitor abuse, such as eBay’s VeRo , MarkMonitor or your preferred law firm or trade mark attorneys

Legal framework

Commercial speech such as advertising is regulated by numerous laws, standards and codes. The Web introduces the added complication that it is a global communication system which overlays national legal systems. This is the reality. The brand protection job on the Web involves monitoring globally and acting (usually) locally.  You can act locally via courts, certain tribunals, intellectual property registration offices, domain name registrants and other forums.  However action is also available for domain name management with the World Intellectual Property Organisation’s Arbitration and Mediation Center for the resolution of domain name disputes.

Noric Dilanchian