Proof that even IP lawyers need IP lawyers
This week we were reminded of just how easily trade mark infringement can occur online. This time, somewhat ironically, it was our own brand that needed protecting.
 |
When searching for Adams & Adams, another IP firm appeared in the sponsored Google results. That, in itself, is not unusual. As the largest IP firm in our market, competitors will sometimes bid on our name as a keyword. The commercial advantage is obvious: it allows the competitor’s advertisement to appear alongside (or even above) us in search results and capture the attention of users already looking for our services.
The legal position on this was clarified in Cochrane Steel Products v M-Systems Group some years ago. In that case, the Supreme Court of Appeal held that the mere bidding on a competitor’s trade mark as a Google Ads keyword is not, in itself, unlawful. Admittedly, that case did not involve a registered trade mark, but it was in line with EU decisions on this point. The SCA found that the key question was whether the advertisement itself gives rise to deception or confusion. Where the competitor’s mark is used only in the background as a trigger (and not in the visible advertisement), and the ad clearly identifies the advertiser, the court found that this is simply a form of healthy competition, and that today’s internet savvy consumers would know that they were merely being offered alternatives. They would not be confused or misled. The difference here, however, was that our name, Adams & Adams, which is also a registered trade mark, was used within the competitor’s advertisement itself, under its own name. That crosses the line. Using another party’s registered trade mark in your advertising in a way that suggests association or endorsement is a very different proposition and will typically amount to trade mark infringement. |
The slightly amusing part is that this came from within the IP community itself. After experiencing firsthand some of the outrage that our clients feel when their brand is misused, the matter was fortunately solved through a phone call to the competitor who had no idea that their agency had gone down this road. They undertook to rectify the situation immediately.
As IP attorneys, we spend our days advising clients on where the legal boundaries lie. Occasionally, it seems, we also provide a live demonstration of how easy it is to step over them.
Kelly Thompson
Your Brand Crossed the Border. Did Your Trade Mark?
Why foreign brand owners should protect their trade marks in South Africa By Amina Suliman and Ntethelelo Ndaba Your Brand Is Here. Are Your Rights? Expanding into a new market is exciting. Businesses...
October 01 2026
South Africa further strengthens its position as production base for global commercial exploitation of new plant varieties
Plant breeders’ rights remain central in securing investment in local production capacity South Africa has opened a new export market for locally produced cherries. On 8 September 2026, South Africa...
September 30 2026
When Brands Get Patriotic
Use of the South African flag in your trade mark and products The South African flag, with its unique design and vibrant colours, is more than just a national symbol. It evokes a deep sense of pride, ...
September 28 2026