Keyword advertising refers to the purchase of terms (aka “keywords”) on online search engines like Google, in order to trigger the display of an advertisement for the advertiser’s goods or services in the search results when those terms are searched.

When does keyword advertising amount to trade mark infringement? This issue was considered for the first time by the Singapore Court of Appeal in East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2025] SGCA 28.

Brief Facts

The Claimant operated a clinic known as “East Coast Podiatry” and is the registered proprietor of the mark . The Defendant purchased various keywords on Google Ads — including “east coast podiatry” and similar phrases. These keywords were sighted in the Defendant’s advertisements that appeared on the Google search results page, but not on its website.

The Claimant sued for trade mark infringement and passing off. Both claims were dismissed at first instance, and the Claimant appealed on its trade mark infringement claim.

The Outcome

The Court of Appeal dismissed the appeal on the basis that the Claimant had failed to show that there was “trade mark use” — i.e., that the infringing sign had been used to denote the trade origins of the Defendant’s services.

In coming to this conclusion, the Court considered the following factors:

1. The objective circumstances surrounding the Defendant’s use of the signs – e., how the Defendant’s use of the signs interacted with the resulting advertisement.
2. The inherent distinctiveness of the signs used by the Defendant – e., the strength of the trade mark as a badge of origin. The more descriptive or generic the signs, the less likely the Court will find that the Defendant’s use amounts to trade mark use.
3. The website which an Internet user was redirected to upon clicking on the Defendant’s advertisement. This is said to be relevant in determining the purpose for which the signs were used.

Applying these factors, the Court of Appeal found that the Defendant had used the keywords descriptively to refer to podiatry services in the East Coast region of Singapore, as part of advertising the impending opening of its new branch in that region. This understanding was reinforced by the fact that the Defendant marketed and sold its services under its own distinct branding on its website.

In reaffirming the need to show trade mark use before a trade mark infringement claim can be made out, the Court of Appeal rejected the “effect-centric” approach that has been adopted in the UK and EU – which focuses on whether a defendant’s use is “liable to affect the functions of the registered trade mark” – in particular, its essential function of guaranteeing origin. This approach was said to be inconsistent with Singapore’s statutory framework, which requires the courts to focus on the use complained of instead of the effect of such use.

The Court of Appeal went on to opine that, even if trade mark use was established, the trade mark infringement claim would have failed because the competing marks were not similar. This was because the keywords did not contain a crucial element of the Claimant’s registered trade mark  – namely, the  device. The use of “EAST COAST PODIATRY” did not amount to infringement because those words were purely descriptive of the location / services in question.

Key Takeaways

This decision affirms that the use of third party brand names in keyword advertising in Singapore does not, by itself, amount to trade mark use. Much depends on the context.

For brand owners, particularly owners of brand names which may be descriptive, it is important to assess whether the use in any keyword advertisement of concern is to denote origin or otherwise (e.g., location), and the extent of similarity between their brand name / registered trade mark and the infringing sign, before taking enforcement action.

Brand owners who wish to increase the chances of successfully preventing competitors from using their brand names in keyword advertising should seeking word mark registrations (i.e., without any stylistic or device elements). However, registration will be denied if the brand name is deemed to be descriptive. So, the selection of a distinctive brand name is an important first step in ensuring that the name will enjoy broad protection.