October 2009
Google AdWords not trade mark infringement in Advocate General's opinion
The highly anticipated opinion of the Advocate General in relation to claims made to the French Courts by Trade Mark owners including Louis Vuitton that Google’s AdWords service infringes their trade marks has been given.
At the outset he emphasises that the ECJ has been called upon only to assess the legality of the use of keywords as part of the AdWords service and not the subsequent use of trade marks on advertisers’ sites, products sold on such sites nor use of the trade marks in the text of the ads displayed.
Such uses, he states, are independent of the matter at hand and their legality must be assessed on their own terms.
After a lengthy assessment of Google’s AdWords service the Advocate General concludes that in his opinion, Google does not commit trade mark infringement by offering keywords corresponding to trade marks.
He applied each of the requirements necessary for a finding of trade mark infringement under EU law and substantiated his opinion by stating that:
1. As there is no product or service sold to the general product when keywords are offered via the AdWords service such use of a trade mark by Google cannot be considered as being a use in relation to goods or services identical or similar to those covered by the trade marks.
2. The mere display of advertisers’ sites in response to keywords on Google results pages does not establish a risk of confusion on the part of consumers as to the origin of goods and services, as they make such assessment based on the content of the advertisement/the website itself.
3. Though protection is offered to trade mark owners against the use of their trade mark in a way which is detrimental to its repute or takes unfair advantage of it, trade mark owners do not have an absolute right of control over the use of their trade marks. Accordingly Google’s use, which is a legitimate use, allowing Internet users to access information concerning trade marks cannot be prevented by trade mark owners.
In addition to the above, the trade mark owners argued that even if the AdWords service itself doesn’t infringe trade mark law, it facilitates the infringement by third parties and so Google should be held liable for committing a contributory infringement.
The Advocate General responded by stating that unlike in the United States, such concept of contributory infringement does not exist under EU trade mark law and so cannot be relied on to hold Google liable without drastically extending its scope.
With regard to the possible liability of advertisers selecting keywords corresponding to trade marks, the Advocate General stated that such parties cannot be held liable for trade mark infringement as their selection of keywords is not a commercial activity but a private use on their part.
BRIFFA Comment
As highlighted in the Advocate General’s opinion, it is important for users of the AdWords service to remember that although their selection of AdWords does not constitute trade mark infringement, their subsequent use of such keywords in the text of their ads or website can potentially constitute trade mark infringement and, therefore, legal advice should be sought before such use.
The Advocate General’s opinion, though an interesting analysis of European trade mark law, is not legally binding on the parties and therefore we will have to wait for the ECJ judgement on this matter which is expected early next year.
For further information contact info@briffa.com.