Trade mark use and the internet - Keywords and search engine optimisation
12 September 2014
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  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.
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