In our August 2016 newsletter we mentioned that Apple had announced plans for its iOS 10 operating system to allow developers to pay to promote their apps. This would occur at the top of relevant search results in the app store.
On 25 April 2017 ‘Search Ads’ launched in Australia, New Zealand and the United Kingdom. Eligible developers are able to receive a US$100 credit towards their first campaign.
In the recent Federal Court decision of Veda Advantage Limited v Malouf Group Enterprises Pty Limited (2016) 241 FCR 161, Justice Katzmann held that the use of trade marks as keywords in Google ‘AdWords’ did not constitute trade mark infringement, as the keywords were not being used ‘as a trade mark’ within the meaning of the Act. The references to the competitor were used in a descriptive sense, not as a badge of origin to indicate a connection between the two parties. Likewise, use of a sign not visible to the public is not use ‘as a trade mark’ within the meaning of the Act.These sponsored search advertisements raise issues of potential trade mark infringement and consumer confusion, which could occur when a competitor purchases a trade mark of another company to use to direct customers to their app.
The decision in Veda means it is unlikely that mere use of a trade mark as a sponsored keyword search term will result in trade mark infringement (although this issue is yet to be tested fully in relation to Apple ‘Search Ads’). Businesses should carefully monitor how their brands are being utilised to promote third party apps and take prompt action if they believe that their rights are being infringed.
HWL Ebsworth’s Intellectual Property team has considerable experience helping clients protect their brands by registering trade marks in Australia and abroad. Please contact a member of our team for further information on how we can assist you.
This article was written by Luke Dale, Partner and Megan Peake, Law Clerk.