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Google AdWords – Advocate General’s Opinion

There are some news in regards to cases involving the question whether the use of trademarked keywords in Google AdWords constitutes a trademark infringement. The Advocate General Poiares Maduro has delivered his opinion on the joined cases C‑236/08, C‑237/08 and C‑238/08 involving Google (France), Viaticum Luteciel, CNRRH and others, previously ruled by the French Cour de Cassation.

This opinion is not to be confused with a judgement of the European Court of Justice (ECJ) nor is it in any way binding for the ECJ. But still – it is a first outlook on possible further developments, especially as there are also other similar cases (see also my earlier Google related posts here, here and here) pending with the ECJ.

The opinion is clearly guided by the principle that “…. it is important not to allow the legitimate purpose of preventing certain trade mark infringements to lead all trade mark uses to be prohibited in the context of cyberspace…”. The Advocate General also emphasises that “…it is not the use in ads, or on the sites advertised, that is the subject…” of his opinion.

In brief, the Advocate General concludes that the use of trademarked keywords by Google in its AdWords system (the selection process) does not constitute a trademark infringement. Trademark proprietors are referred to intervene “…when the ads are displayed to Internet users…”.

The opinion draws the following key conclusions:

1. The mere selection of a trademarked keyword in Google AdWords or a similar paid Internet referencing service without the trademark proprietor’s consent does not constitute a trademark infringement. Advertisers are not acting in the course of trade when selecting keywords because they are being sold these keywords by Google in relation to the AdWords service. Thereby the advertisers are acting as mere consumers which is private use.

2. A trademark proprietor may not prevent a provider of such services from making available keywords reproducing registered trademarks based on Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 as AdWords is not identical or similar to those covered by the trade marks.
More clearly the Advocate General rejects “…. the notion that the act of contributing to a trade mark infringement by a third party, whether actual or potential, should constitute an infringement in itself…”, arguing that otherwise newspapers would have to be prohibited as they could potentially be abused by third parties to infringe trademarks as well.

3. Neither may a proprietor of a trademark with a reputation prevent such keyword use based on Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 as the other functions of the trade mark (e.g. guaranteeing the quality of goods, communication etc.) should not be considered to be affected as the Advocate General puts it. This conclusion seems vastly result oriented, based on the concern that “… if trade mark proprietors were to be allowed to prevent those uses on the basis of trade mark protection, they would establish an absolute right of control over the use of their trade marks as keywords. Such an absolute right of control would cover, de facto, whatever could be shown and said in cyberspace with respect to the good or service associated with the trade mark…”.

4. Paid Internet referencing services are no information society services consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC. This means Google would not be exempt from liability under national law for featuring content constituting trade mark infringements. The argument is based on the aim of Directive 2003/31 which is to ensure the Internet as a free and open public domain. The Directive aims to achieve this by limiting the liability of those transmitting or storing information.  The Advocate General however argues, that the content featured in Google AdWords (the ads actually displayed) does not deserve this kind of protection as it originates from Google’s relationship with the advertisers and thus AdWords is not a neutral information vehicle.

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September 27, 2009   1 Comment

L’Oréal vs. Bellure

The European Court of Justice (ECJ) had to decide in a case where the defendant (Bellure) was marketing imitations of the claimant’s (L’Oréal) fragrances whereby packaging and bottles were being generally similar however this similarity was unlikely to mislead professionals or the public. Further on the defendant was marketing these imitations by using L’Oréal´s wordmarks in a comparison price list.

One of the key questions the court answered (in the negative), was whether the applicability of Directive 89/104/EEC (to approximate the laws of the Member States relating to trade marks) and of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) requires a likelihood of confusion.

The taking of unfair advantage of the distinctive character or the repute of a mark pursuant to Article 5(2) of Directive 89/104/EEC does not require a likelihood of confusion or detriment to the distinctive character or the repute of the mark.

The unfairness of the use of a trademark arises where a third party seeks

  • to ride on the coat-tails of the mark with a reputation and
  • to benefit from the reputation of that mark

and thus is exploiting the proprietor’s marketing efforts without paying any financial compensation.

Under Article 5(1)(a) of Directive 89/104/EEC the proprietor of a registered trade mark has the right to ban a third party from using that trademark in a comparative advertisement not compliant with the requirements as per Article 3a(1) of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) even if such use does not jeopardise the essential function of the mark (indicating the origin of the goods or services) if it affects one of the other functions of the mark and by that going beyond a mere descriptive use. These complimentary functions are in particular:

  • communication
  • investment
  • advertising.

The court sees the way in which L’Oréal’s wordmarks were being used by the defendant in the price lists as more than a mere descriptive comparison. In fact the price lists in this case are classified by the court as a means of advertising.

An advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark unlawfully presents “goods or services as imitations or replicas” within the meaning of Article 3a(1)(h) of Directive 84/450 (amended by Directive 97/55) and advantages gained as a result of such unlawful comparative advertising are thus taken unfairly of the reputation of that mark pursuant to Article 3a(1)(g) of Directive 84/450.

It has to be noted that on the 27. November 2008, Directive 89/104/EEC has been replaced by Directive 2008/95/EC. However regarding the date of the case’s facts in the main proceedings, this case still had to be decided applying Directive 89/104/EEC.

European Court of Justice (C-487/07 – 18. June 2009)

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June 22, 2009   No Comments

Keywords Going Bananas

In the so called “Bananababy Case” the Federal Court of Justice (BGH) has referred the case to the European Court of Justice (ECJ), to answer the following question (see also my previous post about using company symbols as keywords ):

Is it to be deemed “using in the cause of trade” as to Art. 5 no. 1 Clause 2 let. a of Directive 89/104 EEC, if a third party is using a symbol identical to a trademark without the consent of the respective trademark owner, by booking this symbol as a keyword (here: “bananababy”) in a paid – for search on the Internet (here: Google AdWords) to advertise identical products or services, if

  • the advertisement is separated from the natural search results,
  • the advertisement is clearly labelled as such,
  • and if said advertisement does not display the symbol itself or any reference to the actual trademark owner or trademark owner’s goods?

(Federal Court of Justice – I ZR 125/07 – 22. Jan 2009)

In the relevant case, both parties are selling adult accessories on the Internet. The plaintiff has trademarked the term “bananababy”. The defendant used this term as a keyword on Google AdWords, however did not actually use this term in the advertisement itself.

See also this previous post about a Federal Court decision dealing with keywords, company symbols and the likelihood of confusion. Although,  it is a constellation quite similar to this one, it has not been referred to the ECJ. Reason: Directive 89/104 EEC is not applicable to company symbols.

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May 11, 2009   No Comments