In online advertising, keyword advertising is a common and effective tool. Typically, keyword advertising involves an advertiser paying (usually a search engine, e.g. Google) to have its advertisement or a link to its webpage appear in the results listing when a person uses a selected word or phrase to search the internet through that search engine.

The use and selection of such words and phrases in keyword advertising may also attract issues of trademark infringement.

Singapore has recently considered the question of trademark infringement in the context of keyword advertising in the case of East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102. In this case:

• the claimant, East Coast Podiatry Centre Pte Ltd is the registered proprietor of various “East Coast Podiatry” trade marks.
• the defendant, Family Podiatry Centre Pte Ltd purchased a sponsored link from Google Ads with the headline “east coast podiatry”, “podiatry east coast” and “podiatrist east coast”.
• the claimant brought an action for trademark infringement for the use of such sponsored links..

The Singapore High Court in deciding this case, endorsed and applied the test for infringement in Google France SARL v Centre National de Rechercheen Relations Humaines (CNRRH) SARL and others [2011] All ER (EC) 411. Under this test, whether there is infringement is assessed with respect to the following:

• Whether the advertisement would prevent normally informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to in the advertisement had originated from the proprietor of the trademark/an undertaking economically connected to it or, on the contrary, originate from a third party;
• Whether the trademark proprietor is entitled to prevent the display of third party advertisements which such internet users may erroneously perceive as emanating from that proprietor or which suggest that there is a material link in the course of trade between the goods or services in question and the proprietor; and
• If the advertisement does not suggest an economic link, is vague as to the origin of the goods or services in question so that such internet users are unable to determine, on the basis of the advertising link and the commercial message attaching to it, whether the advertiser is a third party or, on the contrary is economically linked to the proprietor, then this will have an adverse effect on the origin function of the trademark.

In the application of this test, the Singapore High Court took into account the defendant’s URL and website. The Court found that these were necessary factors to consider as the purpose of Google ads is to entice consumers to click on the sponsored links and to access the advertiser’s website. In the same vein, the viewpoint to be adopted of the consumer is one of an average consumer who ‘would exercise some care and measure of good sense in making his or her purchases” and is “reasonably well-informed, reasonably observant and circumspect”.

Although the keywords used were similar to the claimant’s trademarks, because the defendant’s website was sufficiently distinctive of the defendant, the Singapore High Court found that the relevant public would have been aware of the distinction between the claimant and the defendant, and that it is unlikely that the public will be confused. Accordingly, there was no trademark infringement.

The test for infringement presents a helpful guide for both trademark owners and advertisers when considering internet keyword advertising.