An ECJ Advocate General has advised the Court that Google does
not infringe companies' trade mark rights when AdWords allows other
firms to pay for their adverts to be shown when a trade marked term
is searched for.
Three French companies have taken Google to court arguing that
their trade mark rights are infringed when other companies use
their names as triggers for ads.
Google's AdWords system displays adverts next to the natural
search results generated by a search term. Advertisers pay to have
their ads appear beside chosen search terms.
The Google case will determine whether or not it is allowed to
let companies bid to have their ads appear when terms trade marked
by others are searched for.
ECJ Advocate General Poiares Maduro has advised the Court that
Google's behaviour is legal and does not infringe the trade mark
rights of companies.
He said that the situation is not like one company selling goods
under another's trade mark because the trade mark is hidden in a
transaction between an ad space buyer and Google.
"There is no good or service sold to the general public. The use
is limited to a selection procedure which is internal to AdWords
and concerns only Google and the advertisers," he wrote. "The
service being sold, and to which the use of the keywords
corresponding to the trade marks is linked, is therefore Google’s
own service, AdWords. The use consisting in allowing advertisers to
select in AdWords keywords which correspond to trade marks, so that
ads for their sites are presented as results for searches involving
those keywords, does not constitute a trade mark infringement."
Advocates General produce advice which judges at the ECJ can
follow or not. The advice is reportedly followed in around 80% of
cases.
Maduro said that there was a link between a trade marked keyword
and the ads that it triggered, but that the existence of that link
was not enough to establish trade mark infringement.
"Neither the display of ads nor the display of natural results
in response to keywords which correspond to trade marks leads to a
risk of confusion as to the origin of goods and services," he
wrote. "Accordingly, neither AdWords nor Google’s search engine
affects or is in danger of affecting the essential function of the
trade mark."
Brand owners have taken court cases against Google over the
issue in the UK, France, Germany and the US, and an ECJ ruling will
be influential in settling other disputes.
The Attorney General said that, contrary to Google's claim,
permitting people to bid on others' trade marks was a 'use' of
trade marks. The question it had to answer, it said, was whether
that use relates to goods and services and infringes holders'
rights.
"The trade mark proprietors are urging the Court to … rule, in
effect, that the mere possibility that a system – in the present
cases, AdWords – may be used by a third party to infringe a trade
mark means that such a system is, itself, in infringement," said
Maduro. "Indeed, the trade mark proprietors do not wish to limit
their claims to cases where AdWords is actually used by sites
offering counterfeit goods; they want to nip that possibility in
the bud by preventing Google from being able to make keywords
corresponding to their trade marks available for selection."
"From the existence of a risk that AdWords may be used to
promote those counterfeit sites, they deduce a general right to
prevent the use of their trade marks as keywords. If the
infringement lies in the use of those keywords in AdWords, as the
trade mark proprietors claim, that is so whether or not the sites
displayed in response actually infringe the trade mark," he wrote.
"The Court is thus being asked to expand significantly the scope of
trade mark protection. I shall make clear why I believe that it
ought not to do so."
Maduro also said that he was worried about the power that ruling
in favour of the trade mark holders would give them.
"I am concerned 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," he said.
Intellectual property law expert Iain
Connor of Pinsent Masons, the law firm behind OUT-LAW.COM, said
that ruling in favour of the trade mark holders may not have that
effect on natural results because trade mark law only applies to
use in the course of trade. "By equating natural results with
sponsored links the advocate general appears to be discounting the
significance of the payment made by the advertiser to Google," he
said.
The Advocate General did say, though, that because Google
profits from the ads shown in its AdWords system it cannot qualify
for the exemption from liability that the E-Commerce Directive
gives to companies that are simply hosts of electronic
information.
Connor said that he believed that Maduro had made a mistake.
"The Advocate General's opinion is self contradictory. EU law
provides a defence to people who are not really involved in trade
mark infringement and he says Google cannot rely on this defence,"
he said. "However, at the same time he does not think Google is
liable for trade mark infringement because the AdWords scheme is
something private between the advertiser and Google."
"This does not make sense as is evident from a simple Google
search which displays sponsored links for competitor products and
fake goods. As is often the case, we will have to wait for the
European Court of Justice to make sense of it," he said.
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