March 2010
The Google AdWords service allows advertisers to register particular combinations of words (“keywords”). When someone uses Google for a term containing those keywords, Google includes an advertising link in the search results.
Louis Vuitton complained that other advertisers had registered its own registered trade marks as keywords, to bring up advertisements for the other advertiser’s products when someone used Google to find Louis Vuitton’s goods. Louis Vuitton argued that this meant that Google had infringed their registered trade marks.
The European Court of Justice has now ruled that Google did not infringe Louis Vuitton’s registered trade marks.
The judge explained that Google itself does not use the trade marks, but merely provides a “referencing service”. Google’s role was passive, and it did not have knowledge of, or control over, the registered keywords in its AdWords service.
The decision gives guidance for a referencing service provider (such as Google) to avoid trade mark infringement, although the judge emphasised that any decision on infringement must ultimately be assessed on a case by case basis. The decision is clear that, if a referencing service gives its provider knowledge of or control over a registered trade mark, then the service may well infringe the trade mark.
The court decided that a registered trade mark owner can prevent an advertiser reserving a keyword identical to its registered mark, under certain circumstances. Those circumstances are when the keyword triggers an advertisement for goods or services identical to those covered by the trade mark, and also where it is not clear, to an “average internet-user”, whether or not the advertisement is by the trade mark owner or a commercially associated party.
Google will now probably adapt its AdWords programme to advise advertisers to register a keyword only if they have the right to use it.
If you own a registered trade mark and know that someone else has registered a Google AdWord keyword identical to the mark, you should request Google to disable it.
If you are a trade mark owner and would like advice on this issue, please contact us for further information.