The misuse of keywords, which includes or corresponds to the name of a registered trademark, can have legal and economic consequences.
In today’s digital environment, it is increasingly common for competitors to include the trade name or trademark of a company or individual as “keywords” in Google Ads campaigns.
First, it is important to mention what is meant by “keywords.” As we know, Google Ads is one of the most widely used digital advertising platforms worldwide, which works through a system of “keywords” that are the expressions a person types into the Google search engine to find a product, service, or a specific brand or company.
The latter pay so that when the user enters those words, their page or ad appears at the top of the results.
The problem here arises when one of those keywords being used includes or corresponds to the name of a registered trademark.
Therefore, when a user searches for the brand of a market leader and the first results show ads from other competitors, there is a real risk of confusion: the consumer may understand that there is a commercial link, a sponsorship, or even that they can purchase the products of the brand they are searching for on the advertised page, which can turn a “commercial or advertising strategy” into a possible act of trademark infringement and unfair competition.
Thus, it is essential to establish that each case must be analyzed individually.
One aspect to consider is when the competitor’s brand appears in the title or header of the Google Ads ad. In this case, it is clear that we are dealing with trademark infringement, since a sign protected exclusively by its owner is being used for the benefit of a third party without the proper authorization to do so.
Therefore, when we are faced with an obvious misuse of a registered trademark, the Industrial Property Law grants the owner various actions to demand the immediate cessation of the expression and to take action for both trademark infringement and acts of unfair competition.
In the case of the former, claims can be filed with Google as a civil action to request its cessation, in addition to possible compensation for damages.
In the second case, it is also possible to file a joint action for unfair competition with the aim of preventing the continued use of the trademark or expression as keywords in a competitor’s Google Ads.
However, when the trademark is not displayed in the headline or text of the ad, but it is known that it was used as a paid keyword, i.e., it is a sponsored result, the discussion is more complex.
In these cases, the trademark infringement loses weight, since the sign is not directly displayed for the consumer to see, i.e., the first result that appears as “sponsored” directs the user to a competitor’s page, without the trademark being expressly displayed in the ad, headline, or on the website itself.
However, this does not mean that the conduct is exempt from reproach. In this situation, it will be necessary to analyze the background of each case to determine whether the advertiser’s purpose was to mislead consumers and divert the trademark owner’s customers to its own business, in which case it could constitute an act of unfair competition.
Therefore, if my registered trademark is being used illegitimately, it is essential to take action to obtain the immediate cessation of such use. Depending on each case, if appropriate, start by sending a warning letter to the infringer, informing them that their conduct constitutes an infringement. If a favorable response is not obtained, it will be necessary to evaluate the background and define the most appropriate legal strategy to take legal action.
Finally, the recommendation is clear: both companies and individuals who invest in digital advertising must be especially careful and avoid incorporating trademarks registered by third parties as keywords in Google Ads. Otherwise, they risk facing actions for trademark infringement or unfair competition, with economic and reputational consequences.
Similarly, it is essential that each owner keeps their trademarks duly registered and renewed, and that they periodically monitor their digital presence in order to detect and take timely action against unauthorized use.
For more information on these topics, please contact our Intellectual and Industrial Property Group:
Eugenio Gormáz | Partner | egormaz@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
Matías Selamé | Asociado | matiasselame@az.cl
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