South Africa:

As it stands the policy with regards to TM’s and Google’s attitude with regard to policing TM’s has varied from region to region. In South Africa, Google only monitors the use of TM’s in ad text and not in the keywords themselves.

Instituting a TM complaint procedure in terms of Google Adwords’ Terms and Conditions (we are governed by Ireland’s version) will NOT result in keywords being disabled and they will only investigate words in the ad text.

That sets out Google’s policy on TM’s applicable to South Africa and now most other regions. This is not however the only policy governing TM usage as Google’s Terms and Conditions will always apply and as expected the terms require that the following general obligations be complied with:

  1. You cannot engage in an illegal business practice where an ad is made available;
  2. You must warrant that you have the necessary rights to publish the ad;
  3. You warrant that the use of the ads will not violate any code or any third party’s proprietary Intellectual Property (which would include registered and unregistered TM’s).

Google is not acting as the initial arbiter in determining whether the use of a TM is legal or not but does not (and could never) condone such illegal use. As this has always been the policy in Google Ireland’s terms and conditions, and as South Africa has always subscribed to these terms and conditions, South Africa has never had a right to complain to Google about keywords, only ad text.

But it is important to note that all common law or legislated rights and remedies for preventing abuse of a TM remain available for use by the TM owner as a corporate policy does not supersede the law.

Other Jurisdictions:

As you are aware, Google recently announced a shift in the current TM policy contained in both the terms and conditions relating to the US and also to most of Western Europe for their Google Adwords.

This change caused quite a stir among the major brand players in the marketplace. Basically, Google decide it no longer wanted to play policeman and as such announced that they will no longer police TM usage. As long as the advertiser actually has the TM on their website and is actually either selling the product or service, or providing unbiased information about the product or service related to the mark in question, the particular advertiser was entitled, in terms of Google’s policy, to use such TM in their ad text, without requiring permission from the owner of the particular TM.

It is important to note that this policy cannot and does not trump the law of the jurisdiction in which the marks are utilised. It merely absolves Google from having to police the issue of TM ownership and permissions.

As mentioned previously, South Africa has always fallen under the legal auspices of Google Ireland and we subscribe to those terms. The policing of TM’s was always absent from the Irish terms, Google having the sense to realise that the effort and cost involved in policing multi-jurisdictional legal requirements for TM usage was neither viable nor commercially sensible.

Recently, as a result of Google’s changed position with regard to most of Europe, so that it no longer polices the illegal use of TM’s in adverts and keyword searches, has resulted in a flurry of European Court rulings on the matter.

This however, whilst possibly carrying persuasive power, is not immediately relevant to how the law operates in South Africa due to it not being binding on South African Courts.