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Professional briefing IP
The Advocate General’s opinion in the Google AdWords case has
divided commentators; but will it be followed by the European Court?
On the mark?
Recently the European Court of
Justice’s Advocate General, Poiares
Maduro, delivered his opinion on the
ongoing dispute between Google and
three French companies regarding
Google’s AdWords service. The
opinion had been eagerly awaited by
lawyers and brand owners seeking
clarity on whether AdWords
constitutes trade mark infringement.
The opinion, that the service does not
in itself constitute an infringement,
has been met with surprise and leaves
much uncertainty pending the final
decision of the court.
Google AdWords is a service
whereby parties can pay to have
their web address displayed as a
“sponsored link” on the Google
results page. The service centres on
“keywords” which, when entered
into the search engine, trigger the
return of sponsored web links.
Controversy centres on the fact that
one party can obtain the AdWords
for another party’s trade marks. For
example Adidas could obtain the
AdWord, “Nike”. Brand owners have
been concerned about this,
particularly with regard to potential
misuse by the sellers of counterfeit
goods. Indeed one of the French
actions referred to the ECJ concerns
Louis Vuitton and a counterfeiter.
Limited use
The Advocate General considered
article 5 of the Trade Mark Directive
(89/104), which forms the basis of
UK trade mark legislation. Central to
his assessment was his interpretation
of article 5(1), which sets out the
grounds for trade mark infringement.
He opined that there are four
cumulative conditions in relation to
the use of trade mark(s) which must
be met in order to establish
infringement, namely:
the owner of the relevant mark(s)
must not consent to the use;
the use must be in the course of
trade;
the use must relate to goods or
services which are identical or similar
44 / theJournal December 09
to those covered by the trade mark(s);
and
the use affects or is liable to affect
the essential function of the trade
mark(s) (to guarantee to consumers
the origin of the goods or services), by
reason of a likelihood of confusion
on the part of the public.
Whilst the Advocate General
considered that the first two
conditions had been satisfied, he
opined that permitting advertisers to
select AdWords keywords which
correspond to trade marks, so that
adverts for sites are presented as
results of searches involving those
keywords, does not meet the
conditions required to establish
infringement. He commented: “no
good or service is sold to the general
public. The use is limited to a
selection procedure which is internal
to AdWords and concerns only
Google and the advertisers. The
service being sold, and to which the
use of the keywords corresponding to
the trade mark is linked, is therefore
Google’s own service, AdWords”.
Furthermore, he did not consider
that the essential functions of trade
marks are compromised,
commenting: “uses by Google, in
AdWords, of keywords which
correspond to trade marks do not
affect the other functions of the trade
mark, namely guaranteeing the
quality of the goods or services”.
Whilst in his opinion infringement
had not been established, reference was
made to the trade mark proprietor’s
right to address issues under national
liability laws if specific occurrences
giving rise to illegal damage to their
trade mark could be shown.
Reaction and follow-up
There are some who support the
Advocate General’s opinion, especially
those who wish to restrict the scope of
the exclusivity afforded to trade mark
owners. Indeed the Advocate General
was concerned that a finding of
infringement by the ECJ would extend
trade mark protection, “to rule in
Some
commentators
argue that the
Advocate
General has
misinterpreted
article 5(1) as
there is not
always a need
to show a
likelihood of
confusion to
establish
trade mark
infringement
effect, that the mere possibility that a
system – in the present cases, AdWords
– may be used by a third party to
infringe a trade mark means that a
system is, itself, in infringement”.
There are many, however, who have
been surprised by and are critical of
the opinion. Obviously it has not
been welcomed by brand owners,
who will now have to consider
AdWords, and their associated costs,
as an additional strand of their brand
protection and marketing policy.
There has also been legal criticism,
with some commentators arguing
that the Advocate General has
misinterpreted article 5(1) as there is
not always a need to show a
likelihood of confusion to establish
trade mark infringement.
Whilst Google will surely be
delighted, the final judgment of the
ECJ is awaited and although an
Advocate General’s opinion is
persuasive, it is non-binding.
In the interim the position is far
from clear. It is worth noting that a
French court ordered eBay to pay the
Louis Vuitton Moet Hennessy group
€80,000 for using the group’s trade
marks as “keywords” only the day
before the release of this opinion.
The final decision of the ECJ is
expected next year. Hopefully this will
offer some certainty on these matters.
Until then, brand owners would be
wise to evaluate their key brands and
whether AdWords should be obtained
to maintain their value.
Ross Nicol, Associate, Maclay
Murray & Spens LLP
www.journalonline.co.uk