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Brand owners could stop keyword triggers that benefit from their reputation, says ECJ advisor

UPDATED: Owners of trade marks with a reputation could stop other companies using their brands as triggers for Google adverts if the trade mark appears in the advert and the use seeks to benefit from that reputation, a European court advisor has said.25 Mar 2011

European Court of Justice Advocate General Niilo Jääskinen has published an opinion on a High Court dispute between Interflora and Marks and Spencer (M&S) over whether M&S can use the term 'Interflora' to trigger adverts in Google search results.

Jääskinen's published opinion advised the Court that the owners of trade marks with a reputation have extra protection that applies when their brands are used as keywords and appear in the text of adverts.

If that reputation-carrying trade mark is used as a keyword by rival companies and appears in the advert it will break trade mark law if "the advertiser attempts thereby to benefit from its power of attraction, its reputation or its prestige, and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark," he said in the opinion.  Advocate General opinions are not binding on the ECJ but are intended to advise judges. They are followed in the majority of cases.

Jääskinen said that the extra protection offered to trade marks with a reputation protects them against the blurring of that reputation; a tarnishment of it, or the free riding on it by competitors.

Though Jääskinen outlined an expanded area in which trade mark owners could take successful
actions, he said that in this case Interflora was unlikely to succeed in arguing that M&S's use of its term as a trigger was an unlawful blurring of, tarnishment of or free riding on its trade mark.

M&S used the term 'Interflora' to trigger its own ads but did not use the term in the text of the ad.

"I do not think that dilution of a trade mark, i.e. weakening of its meaning as denoting goods or services of a specific abstract commercial origin, could legally be seen as resulting from advertising where the trade mark is not mentioned," said the opinion.

He also said that the case was not about tarnishment, and that M&S's behaviour was not free riding.

"The question of free-riding has to be analysed on the basis of the ad shown in the sponsored link," said the opinion. "If that ad mentions or displays the trade mark, the acceptability of the use depends on whether we are faced with legitimate comparative advertising or, on the contrary, with riding on the coat-tails of the trade mark proprietor."

"In its ads Marks & Spencer is neither comparing its goods and services with those of Interflora (‘our goods and services are better/cheaper than those by Interflora’) nor presenting its goods as imitations or copies (‘… we are offering an Interflora type of service’) or even expressly presenting them as alternatives (‘Are you an Interflora customer? Why not try this time Marks & Spencer?’) to them," said Jääskinen.

"Yet the choice of keywords in search engine advertising by Marks & Spencer implies a marketing message that they offer an alternative to Interflora. However, in my opinion this does not amount to free-riding," he said.

The Advocate General said that the Court should rule, as it had in a previous case, that all trade marks, whether they have a reputation or not, can be used as keyword triggers unless that use "does not enable an average internet user, or enables the said user only with difficulty, to ascertain whether the goods or services referred to in the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or from a third party".

The opinion did say, though, that Interflora would be likely to stop M&S from using the keyword because its trade-marked name is unique, and because it is a network of shops. That could lead to consumer confusion, it said.

Trade mark owners should not be able to stop the use of generic or general terms, but where the trade mark is a unique word the trade mark holder has more rights, the opinion said.

The fact that Interflora operates a network of shops added the potential for more than usual amounts of consumer confusion, Jääskinen said. That also would give Interflora more control over the use of its trade mark than might otherwise be the case.

"An error concerning the origin of goods or services arises when the competitor’s sponsored link is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor’s commercial network when it is not," he said. "As a result of this the trade mark proprietor has the right to prohibit the use of the keyword in advertising by the competitor in question."

Editor's note 28/3/11: This story was corrected to state that owners of trade marks with reputations can only exercise the rights described when the trade marked term is mentioned in the text of the ad triggered by the trade mark's use.