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Google loses French AdWords case

Google France has lost a trade mark action brought by hotel chain Le Meridien Hotels and Resorts over the search engine's AdWords keyword advertising service. According to reports, Google is planning to appeal.24 Jan 2005

AdWords allows advertisers to sponsor particular search terms so that, whenever that term is searched for, the advertiser's link will appear next to the search results.

A French regional court last week ordered Google's French subsidiary to stop triggering adverts when users enter searches for Meridien, Le Meridien or combinations of these with the words "resort" or "hotel" if the adverts would infringe the registered trade marks of Le Meridien.

As well as being a trade mark of Le Meridien Hotels, the word "meridien" – French for meridian – is dictionary-defined: the imaginary circle on the surface of the earth passing through the north and south poles at right angles to the equator.

Accordingly, Le Meridien Hotels does not have a monopoly on the word meridien. Meridien Cars exists, for instance, apparently independent of the hotel chain. There is also a typeface called Meridien. The car company or a typeface vendor could sponsor the word meridien to promote their services provided their use was outside the scope of Le Meridien's trade marks - which will be restricted to particular classes.

The sale of the linked ads must stop by today or Google will be fined €150 a day until it complies. In future, Google must remove any infringing use within 72 hours of being notified of the infringement by Le Meridien, or face a similar fine.

But the ruling went further.

Google offers an AdWords Keyword Tool that helps customers refine their choice of AdWords. "It will give you common search queries including or pertaining to your keywords," Google explains. "You can use the relevant results to supplement your list."

The problem appears to be that users' search terms include trade marks – so these appear in the automated list of suggestions.

Google has a policy within Europe of respecting requests from companies that ask it to prevent their marks from being available for sponsoring, and such marks are removed from sale. But it seems possible that these words are not being removed from the Keyword Tool's suggestions.

Entering "hotels" in the Keyword Tool at adwords.google.com today suggests phrases that users have entered – including the brands Ibis, Marriott, Best Western – and Le Meridien.

The court said problems and serious doubts remain about the stability of the remedies implemented to respect protected marks. It ordered Google France to keep the offending terms - Meridien, Le Meridien or combinations of these with the words "resort" or "hotel" - from the Keyword Tool suggestions.

When customers select AdWords at Google, they are given this disclaimer, with a link to Google's terms and conditions:

"Legal Disclaimer: Please note that we cannot guarantee that these keywords will improve your campaign performance. We also reserve the right to disapprove any new keywords you add. Keep in mind that you are responsible for the keywords you select and their appropriate and legal use (i.e. you and you alone are responsible to make sure that your use of the keywords does not violate any applicable laws)."

According to John MacKenzie, an IT litigation partner with Pinsent Masons, the law firm behind OUT-LAW.COM:

"Google will continue to insist that the selection of keywords is for the operator of the account, and that it has no liability for any trade mark infringement. However the French court seems to be moving in the direction of the approach taken by the English courts in the One in a million case. If you deal in trade marks, you risk liability for infringement."

Le Meridien's lawsuit is the latest in a string of actions filed against Google in Europe and the US. It follows another French ruling in October 2003, ordering the search engine to pay damages of €70,000 for allowing advertisers to sponsor the terms "bourse des vols" (flight market) and "bourse des voyages" (travel market), which were registered trade marks of the travel agencies Luteciel and Viaticum.