The ECJ, last month, delivered the first of their rulings on the question of whether the use of registered trade mark in an Internet Adword or sponsored link constitutes an infringement of that registered trade mark by any of the parties involved. The case of Google France v Louis Vuitton Malletier involved Google's policy on sponsorship of keywords in the form of Google Adwords, which has been the source of many cases in recent years. We provided a discussion of a few of these cases in both the January and June editions of this E-Bulletin back in 2009.
In the Google France case the ECJ said that Google was not breaking EU Law by making trade marked keywords available to advertisers. Whilst the judges acknowledged that using identical or similar signs to a trade mark implied the signs' commercial use by a 3rd party they held that a 'referencing service provider' did not itself use those signs. There was no link between the trade mark and the goods or services being sold as the use by Google consisted of allowing advertisers to select keywords so that their adverts were presented as results and so there were no goods or services being sold to the public as such.
On commenting on the advertising function of the trade mark the court said that even though other companies bid on a firm's trade mark in the form of keywords and despite the fact that this could make advertising more difficult and costly, owing to the fact that the process pushes the price of advertising up and the greater competition for advert spaces, this did not represent a blocking of the trademark's advertising function as companies could still reach consumers through a search engine's 'natural' results
However the decision is not lethal to the Interflora case since there are a number of facts that can be distinguished. Firstly Google operate a different policy in the UK to the one they operate in the rest of Europe. In the UK parties can bid for Adwords registered as trade marks, including for use in relation to goods or services for which the trade marks are registered. However, in the rest of Europe a trade mark owner is able to inform Google that it has registered a specific word as a trade mark and Google would then block that word from being purchased as an Adword without the permission of the owner. Furthermore the Court did comment that, whilst Google was not liable, advertisers who choose to sponsor keywords may infringe trade mark rights in some cases and that Google would be liable for that infringement if it did not act quickly to stop that use.
Secondly and most importantly the Interflora action is not being brought against Google as it was in this case but against Interflora's competitor, Marks and Spencer. The Court said that trade mark owners have the right to stop the use of their trade marks in Adwords when adverts displayed suggested they were linked to the trade mark owner or caused confusion about the origin or the goods. The ECJ said that this was a question for the national courts to determine on a case-by-case basis. The judge in the Interflora case has decided to maintain a number of the references to the ECJ despite the ECJ ruling from the Louis Vutton Malletier case because he believes it does not answer all the points referred in the Interflora case.
Advertisers should beware that, whilst the Google Adwords may help advertisers reach their target audience, it may in turn make them the target of a trade mark owner.