Trade mark owners are increasingly facing the unauthorised registration and use of their trade marks as keywords on internet search engines, the effect of which is that searches against their trade marks bring up their competitors’ websites as sponsored advertisements. The most notorious example of this is the registration and use of Google AdWords which trigger “sponsored links” on search results. The European Court of Justice finally considered whether the registration and use of Google AdWords could constitute trade mark infringement, in the case of Google France SARL and Google Inc. v Louis Vuitton Malletier SA and other joined cases (C-236/08, C-237/08 and C-238/08). The court held that a trade mark owner is entitled to prohibit people from using keywords such as AdWords, identical with its trade mark, to advertise on search engines (eg, by means of sponsored links), where the advertisement does not enable an average internet user to ascertain without difficulty whether the goods or services advertised originate from the trade mark owner or someone else.
This has a direct impact on users of Google’s AdWords service. The effect is that internet advertisers can use competitors’ trade marks as keywords, but it must be clear to consumers that the advertised goods or services are not associated with the competitor and the advertisements must not undermine the trade mark owner’s advertising. Ironically this might be more difficult for owners of famous trade marks to prove, as Google will already be promoting their genuine sites in its statistical (as opposed to paid for) results.
It will now be for national courts to decide if the use of another’s trade mark as a keyword is an infringement, and there will be plenty of scope for different decisions across different EU member states. Key questions to be asked will be:
- Does the way the link is presented clearly show that there is no association with the trade mark owner?
- Is there other information from other searches which clears up the position for the consumer?
- Is there other trade mark misuse in the message given by the advertiser?
For Google, there is a “get out of jail free” card here: an internet referencing service provider (such as Google) which stores a keyword identical to a registered trade mark and organises the display of advertisements on the basis of that keyword (eg sponsored links) does not infringe that trade mark.
The ECJ held that storing a keyword identical to a trade mark and organising advertisements on the basis of that keyword does not infringe that trade mark. Therefore, Google and other search engines will not be liable just because they take money from advertising which they do not control, even if the trade mark owner can take action against the advertisers themselves.
The ECJ also held that search engine operators can benefit from the European "safe harbour" exemption from liability arising from the hosting of information if they have not played an active role of such a kind as to give them knowledge of, or control over, the data stored, provided that if they come to know of the unlawful nature of information stored by an advertiser, they act expeditiously to remove or to disable access to the information. This is a very sensible conclusion which ensures that the internet can continue to provide commercial services (the ECJ pointed out that making money is not the same as exercising control).
In conclusion, trade mark owners will have to keep a close eye on competitors using AdWords…or live with it.