What new trademark Google Adword ruling means to marketers

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First published on UTalkMarketing.com, October 2009

By Shireen Peermohamed and Mark Owen

In a case brought against Google by a number of claimants, including Louis Vuitton, an important advisory Opinion has been handed down at the European Court of Justice (22 September 2009), in relation to the sale by Google of keywords containing trade marks.

The crux of the case involves Google selling Adwords to advertisers. Those Adwords sometimes correspond to or contain trade marks owned by other parties.

By selling and then permitting the use of those Adwords for sponsored listings on the Google search engine, is Google itself liable for infringement of those trade marks?

The key findings were:

• In offering Adwords to advertisers, Google was not using a sign identical or similar to the trade mark registrations. Accordingly, there was no trade mark infringement.
• Displaying adverts for goods and services covered by the trade mark registrations in response to keyword trade marks did not amount to infringement by Google either, though it may do by the advertisers.

The Opinion provides an interesting new spin on the debate over liability for online services, which is that service providers who seek to benefit from a liability exemption should remain neutral with regard to the information they carry or host.

This is in keeping with the idea that there should be net neutrality, currently a hot political potato.

If the Advocate General’s Opinion is adopted in full by the ECJ, this will be an extremely important case not only concerning the liability for the use of trade marks on the Internet, but also in respect of liability of service providers generally.

The Opinion is very much in favour of a “free” web environment, where freedom of commerce and expression are important and are to be balanced with intellectual property rights.

It would seem that if service providers can say that they are acting entirely neutrally then they stand a much better chance of escaping liability for what their service is used for.

The reasoning of the Advocate General is in many places difficult to follow. In addition, many will consider his Opinion is too much in favour of “freedom” on the web and the primacy of technology.

However, by his having looked so exhaustively at the issues, the ECJ will have no excuse for now not bringing some long overdue clarity to this important area.