Outsourcing specialist AdvanceTrack has won a two-year High Court battle with the judgement set to have important ramifications for SEO and online advertising.
The case in question is the result of an ‘ill-fated’ Google Adwords campaign in which AdvanceTrack’s competitor, GI Outsourcing repeatedly used its trademarked name and branding.
The landmark ruling is now set to shake-up how businesses use trademarked brands in both their Google Adwords copy and keyword sections, with AdvanceTrack managing director Vipul Sheth calling it a “‘win for the industry” and for holding outsourcing firms to “higher standards.”
The judge found that through the use a third-party Midlands-based marketing agency, GI Outsourcing had infringed the trademark of AdvanceTrack and was guilty of passing off the latter’s trademark as its own.
GI Outsourcing breached laws protecting brands from companies illegally using Google to target their competitors during the spring of 2021 – directly targeting four outsourcing competitors through a Google Adwords campaign.
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Judge James Tindal said: “This is rather a legal minefield…This case may be helpful as an example of how not to do it. A wise first move will be a search whether a competitor’s brand is actually a trademark”, adding “including it [the trademarked brand] in the advert itself as opposed to as just a ‘keyword’ can backfire commercially as well as legally”.
He also added, however, that “even limiting it to a keyword may not be enough to avoid liability”, adding: “It may be wise for a small business to get advice, especially in these legally as well as commercially uncertain times, as our legal system begins in earnest to detach from the EU.”
Serjeants trademark law expert Leanne Hall explained: “We would always recommend carrying out a search to check whether someone else has registered a trademark before you use it. As this case has shown, using a competitor’s mark can make you liable for trade mark infringement.
“Using a Registered Trademark in an advert that is visible in the search results is not acceptable because it creates a high likelihood that customers will confuse the two brands.”
