Page Hargrave - Patent and Trademark Attorneys

Google "AdWords" Judgement

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The Court of Justice (CJ) Issues its Judgement on the Use of Google AdWords in Joined Cases C-236/08, C-237/08 & C-238/08

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In addition to its Internet search engine service, Google offers a paid referencing service called "AdWords" which enables advertisers to bid on keywords. When the keyword is entered into the search engine, the advertising link is displayed alongside the natural search results under "sponsored links".

The brand owners in the three joined cases brought proceedings against Google claiming that Google's AdWords service constituted trade mark infringement. In the case of Louis Vuitton and Google (C-236/08) Vuitton became aware that the entry of terms corresponding to its trade marks into Google's search engine triggered the display of links offering imitation versions of Vuitton's products. In cases C-237/08, and C-238/08 the brand owners (Viaticum & Luteciel and Mr Thonet & Mr Raboin respectively) became aware that the entry of terms corresponding to its trade marks into Google's search engine triggered the display of links to sites of competitors of the trade mark proprietors. It was also established that Google offered the advertisers the possibility of selecting keywords corresponding to their trade marks.

References to the CJ were made in the course of proceedings in each of the joined cases concerning use, in an Internet referencing service, of keywords corresponding to trade marks of third parties.

The CJ's judgement did not follow the Opinion of the Advocate General (AG) and ruled that Google's AdWords service does not infringe the trade marks of brand owners since Google's AdWords service does not constitute "use" by Google of the relevant trade marks for the purposes of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation 40/94.

However, with regard to the advertiser purchasing the referencing services and choosing as a keyword a sign identical with a third party's trade mark, the CJ held (again, in contrast to the AG's Opinion) that this does constitute "use" of the sign within the meaning of the law. Thus, the CJ held that "the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where the advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party".

On the liability of Google, the CJ ruled that provided the internet referencing service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored, the service provider cannot be held liable as a host for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser's activities, it failed to act expeditiously to remove or to disable access to the data concerned.

Accordingly, trade mark proprietors may be able to prevent use of their marks as AdWords in sponsored link advertisements where the advertisement is vague or misleading i.e. if the consumer cannot establish whether the advertisement originates from the trade mark proprietor or not. From a practical point of view, the facts of each case (including Google's role) will be need to be assessed by the national courts on a case by case basis to determine whether advertisers are liable for trade mark infringement.

If you have any concerns regarding Google's AdWords service affecting your trade marks, please contact us.