Trademark Infringement in Listing Ads and the Possibility of Removal Requests

Listing advertisements have become a staple of online advertising because they allow you to select keywords to display your ads and pinpoint users with a high purchasing desire for your services or products. It is common for companies to use their own trademarks, such as their company name, services, and products, in their listing advertisements. For example, if Company A provides a reputation monitoring service called B and has trademarked the company name A and the service name B, they would typically run ads like “For reputation monitoring, choose Company A!” or “For reputation monitoring, choose B!”

However, there are cases where listing advertisements with different wording are posted. For example, Company C, which has no relation to Company A, might run ads like “For reputation monitoring, choose Company C over Company A!” or “Company C’s reputation monitoring service is cheaper than B!” If the company name A and the service B are well-known, there should be many users searching for these names. These ads are intended to attract such users to Company C.

For executives of listed companies and other large corporations, there may be cases where when you search for your own services or products on a search engine, you see ads from other companies using your trademarked brand name (company name, product name, service name, etc.).

We will introduce what kind of measures can be taken in such cases.

What is Listing Advertising?

Listing advertising refers to ads that are displayed in conjunction with search results. When a user is searching for a specific keyword, the ad is displayed because the user has a high interest in that keyword, making it a highly effective form of advertising. Examples of listing advertising include Google AdWords and Yahoo! Promotions.

Listing ads are posted by setting up what kind of ‘ad text’ to display when a user searches for a certain ‘keyword’ in a search engine. For example, if you search for the keyword ‘defamation’, you might want to display an ad text like ‘For reputation damage control, choose Company A!’

Trademark Issues in Listing Ads

There are two main types of trademark issues that can occur in listing ads:

Trademark used as a ‘keyword’

This refers to cases where another company bids and posts ads using a keyword that is registered as a trademark. As a result, when a search is conducted using that keyword, the other company’s ad appears in the search results. Even if a search is conducted using your company’s name or product name, the other company’s ad may appear higher than your own ad.

Trademark used in ‘ad text’

This refers to cases where your company’s name or product name, which is registered as a trademark, is displayed in the ad text. For example, if Company A has registered a product name B as a trademark, and a competing company C posts an ad text saying “C’s reputation monitoring service is cheaper than B!”

This is because Company C is using the string ‘B’, which Company A owns the trademark rights to, without obtaining permission from Company A. Therefore, Company A may be able to claim that this is legally illegal. In this case, by filing a trademark infringement claim with Google for Google AdWords, or with Yahoo! JAPAN for Yahoo! Promotion, you can limit the use of trademark-registered keywords in ads by other companies.

However, it should be noted that what a trademark owner can claim is only the prohibition of ‘trademark use’ by others. Even if you have obtained trademark rights for a certain word, you cannot prohibit the general use of that word. The only thing you can prohibit is the use in a certain manner (called ‘trademark use’).

This judgment is quite specialized, so it is recommended to consult with an intellectual property expert.

How to File a Trademark Infringement Claim

In the case of Google AdWords

To file a trademark infringement claim against Google AdWords, you will need to apply through ‘Google’s Trademark’.

https://support.google.com/adspolicy/answer/6118?hl=en

Although it is possible to apply by mail, we recommend using the form application, which is easier to use, as mailing would involve international postage to California.

1. First, enter the claimant’s information, such as name and company name.
2. Next, enter the ‘Trademark Details’, such as the trademark keyword you want to claim, the target country, and the trademark registration number. At this time, make sure to enter the trademark name accurately in both half-width and full-width personalitys.
3. Enter information about the ‘Advertiser Subject to the Claim’. Here, you can choose between two application methods.

Specific Advertiser

If you want to limit the use of the trademark keyword only for a specific advertiser, select this option. Then, enter information about the relevant advertiser.

All Advertisers

If you want to limit the use of the trademark keyword for all advertisers, except those authorized to use the trademark, select this option. You will be asked to list the ‘Advertisers Authorized to Use the Trademark’, so enter your company’s AdWords account information (the relevant 10-digit ID or URL) and the account information of the advertising partner (licensee, branch, dealer, authorized reseller, etc.) authorized to use the trademark. If you do not enter this, your company’s advertisements and those of your advertising partners may be restricted from using the trademark.

After making the above application, you will receive a review result from Google in about a week. If there are no problems with the review, advertisements using the applied trademark name and advertisements from accounts not authorized to use the trademark will be suspended.

Note that not only the trademark owner and their agents, but also lawyers can act as agents for this application. If you are unsure about the application, you can also ask a lawyer who is knowledgeable about trademark rights.

In the case of Yahoo! Promotion

When filing a trademark infringement claim against Yahoo! Promotion, there is no form available online to apply, so you will need to prepare the necessary documents and apply by mail. The necessary documents are listed under ‘Trademarks’.

https://global-marketing.yahoo.co.jp/guidelines/trademarks.html

The necessary documents are listed as follows on the above page.

1. Reference material that can be used to verify the identity of the applicant (a business card is adequate, if you are a company employee)
2. Search keywords and destination URL (a screenshot of the search results page)
3. Certificate of trademark registration
4. Detailed explanation as to what kind of action made by the advertiser is considered trademark infringement
5. Records and explanation of communication and negotiation with the advertiser

https://marketing.yahoo.co.jp/guidelines/trademarks.html

As with Google AdWords, not only the trademark owner but also an agent with a lawyer’s qualification can apply for Yahoo! Promotion. Given that you need to prepare the necessary documents and apply by mail, we recommend consulting with a lawyer and asking them to apply on your behalf.

What to Do If You Find an Advertisement Infringing on Your Trademark Rights

If you find that your company’s registered trademark, such as your company name, service name, or product name, is being used in another company’s listing advertisement, you can restrict its use.

However, whether it’s Google AdWords or Yahoo! Promotions, while they will investigate and restrict upon a claim from the trademark owner, their basic stance is that they want the trademark owner and the advertiser to resolve the issue directly. There may be cases where you won’t receive a response unless you make a legally sophisticated argument as to why the use in question is illegal.

It would be advisable to first consult with a lawyer, including on whether your claim of trademark infringement is legally valid. Trademark infringement is an act that is also subject to penalties. If your company has a legitimate claim, you should make a request to stop the use of the trademark, possibly through a lawyer.

Introduction to Our Firm’s Measures

Monolith Law Office, with its high level of expertise in both IT, particularly the internet, and law, provides solutions to address what could be called “listing pollution” issues.