Trade mark use and the internet – keywords and search engine optimisation

When considering Australian trade mark law in the context of the internet, no special principles apply. A challenge to use of key words, search engine optimisation (or even registration and use of domain names) relies on established causes of action such as infringement of a registered trade mark, passing off or statutory misleading and deceptive conduct.

A recent Federal Court case which involved these recognised causes of action in the context of search engine optimisation is the Full Court decision of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.

Trade mark use and online marketing (Lift Shop case)

The Lift Shop case does not represent a shift in Australian trade mark law/unlawful passing off, rather, it is merely an application of orthodox principles in the context of "search engine optimisation". In the internet environment, the position in Australia is that use by an advertiser of a third party competitor trade mark owner's mark as a key word to improve the advertiser's rankings in search engine results (search engine optimisation), is not enough, without more, to constitute use "as a trade mark" or unlawful passing off under Australian law. There is no trade mark use as the keyword is not used by the advertiser as a "badge of origin" for the advertiser's goods or services. Commercial organisations should consider key word advertising in search engine practices in light of their appetite for risk and the commercial market in which they operate. Recap

It is convenient to briefly recap the general principles under Australian trade mark law in the context of the internet:

Trade mark "use" only occurs when a trade mark is used as a "badge of origin" ie to distinguish goods and services provided in the course of trade from those other traders ( E&J Gallo Winery v Lion Nathan Australia Pty Limited[2010] HCA15; Trade Marks Act 1995 (section 120)). This concept is embodied in the statutory definition of a trade mark (Trade Marks Act 1995 (section 17)). There is no Australian decision concluding that use by an advertiser of a third party competitor trade mark owner's mark as a keyword for sponsored advertisements (or in metatags) is sufficient to constitute use "as a trade mark" or unlawful passing off. The issue was discussed in the Victorian Supreme Court decision of Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 86 IPR 19 (Reeves J), without being determined. The Mantra case related to the use of websites, offering services competing with the trade mark owner's...