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Descriptive trade marks and Google Adwords
A recent Federal Court decision, Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd  FCAFC 75, has shown the inherent weakness of trade marks which comprise generally descriptive terms.
Lift Shop Pty Ltd (‘Lift Shop’) is the registered owner of the Australian trade mark ‘liftshop’.
In 2011, Lift Shop’s main competitor, Easy Living Home Elevators Pty Ltd (‘Easy Living’), updated its online presence which included the purchasing the keyword ‘lift shop’ for its Google AdWords campaign and using the phrase ‘lift shop’ as part of the headline of its online advertisement. It also included the phrase ‘lift shop’ in the page titles of its website pages.
Lift Shop maintained that Easy Living’s conduct infringed upon its ‘liftshop’ trade mark. It also argued that Easy Living was engaging in misleading and deceptive conduct and passing off.
What was decided?
The Federal Court held that there was no misleading and deceptive conduct. The Court regarded that it was clear from the Google Ads that there was no association between Easy Living and Lift Shop. In particular, the URLs were different (liftshop.com.au v easy-living.com.au) and the other content in headline and body of the ad clearly identified the parties.
The Court also determined that there was no infringement as Easy Living had not used the phrase ‘lift shop’ as a trade mark. Rather, the phrase was being used descriptively to describe the type of shop or the goods sold in the shop. The Court took note that ‘lift shop’ was used descriptively by a number of other businesses.
- While the use of a trade mark in the headline or content of an online advertisement or a URL could constitute trade mark infringement or misleading and deceptive conduct, this will not be the case if the trade mark is used descriptively and the rest of the ad clearly identifies the parties.
- While descriptive trade marks may be powerful from a marketing perspective, they will always be inherently weaker from a legal perspective.
- There is still no Australian decision that has considered whether the purchase of trade marked keywords (where the keyword is not visible in the ad copy) amounts to infringement or misleading and deceptive conduct.
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