ECJ ruling in Google v Louis Vuitton is a blow for brand owners
Today’s ruling by the European Court of Justice (ECJ) in a case about the use of trade marks in keyword advertising is a blow for brand owners and a victory for Google. This highly significant ruling provides much-needed legislative guidance for brand owners and marketers about what is permissible when it comes to use of third party trade marks in online advertising.
In Google v Louis Vuitton, the ECJ has ruled that use of third party trade marks as keywords by users of Google’s Adwords service constitutes an infringement of the brand owner’s trade mark rights only where the advert generated by the use of the keywords prevents the internet user from ascertaining the origin of the goods or services concerned. In other words, there will only be an infringement if the advert causes the internet user to be confused as to whether the goods and services originate from the trade mark owner or another third party. Furthermore, the ECJ has ruled that Google is not liable for any infringements arising from use of its Adwords service. This ruling affirms an earlier Advocate General Opinion, given in September 2009.
This is a set back for brand owners and seriously limits the scope of their trade mark rights when it comes to challenging use of their trade marks in online advertising. Only rarely will the internet user be unable to ascertain the origin of the goods and services and it will therefore be easy for advertisers to circumvent the law and use third party trade marks as keywords. This means that advertisers can secure a commercial advantage by piggy-backing on the reputation of the trade marks.
The ECJ decision is somewhat perplexing as it seems to be bringing in a requirement of confusion or doubt as to the origin of the goods and services which is not relevant for determining the infringement of a registered trade mark by use of an identical sign for identical goods or services.
Trade mark law is playing catch up in this area and there may well be further developments. We are awaiting guidance from the ECJ on other Adwords cases including Interflora v M&S which was referred to the ECJ by the UK court in August 2009. This case specifically asks whether use of a competitor’s trade mark in the text of the sponsored advert constitutes infringement.
If you would like further information, please contact fmcbride@withersrogers.com or your usual attorney.
Fiona McBride
Head of Trade Mark Group
Email: fmcbride@withersrogers.com
Tel: +44(0)117 925 3030
Withers & Rogers Group LLP
