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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
Professional briefing Criminal practice Crown disclosure: the next level COPFS has adopted the encrypted pen drive as its primary method of disclosure of information to defence agents, but agents must first be registered as data controllers In April 2009, the Crown Office and Procurator Fiscal Service (COPFS) introduced new disclosure procedures whereby information disclosed to defence agents is provided electronically on pen drives. One of the main driving forces behind this change is a need for COPFS to comply with the seventh data protection principle to ensure that any information disclosed by them is adequately protected against accidental loss or damage. The pen drives, which are encrypted, can only be accessed by solicitors on receipt of a password, provided by COPFS. Defence agents as data controllers As recently highlighted in this magazine (Journal, August, 27), solicitors are considered processors of personal information for the purposes of the Data Protection Act 1998. As solicitors determine the purpose for which and the manner in which personal data are processed, they are also data controllers. If any of that information is processed electronically, even if it is just to complete legal aid applications or write submissions, then solicitors must notify the Information Commissioner’s Office (ICO) under the 1998 Act that they are data controllers. Failure to notify the ICO is a strict liability offence under the 1998 Act and the ICO is currently targeting solicitors’ and accountants’ firms on a regional basis, including legal firms across Scotland. As data controllers, solicitors also have a duty to comply with the seventh data protection principle by putting in place such measures as are necessary to ensure that all information they process is kept secure. www.lawscotjobs.co.uk Greener Scotland In addition, by reducing the amount of paper generated by cases, these new disclosure processes will also comply with the Government’s Greener strategic objective to improve Scotland’s natural and built environment. Defence agents are then able to print only such information as they require in the preparation and presentation of the defence. The new process is also in line with the current Government agenda in relation to the expansion and encouragement of electronic business in Scotland in the 21st century. Implementation of the new processes COPFS has introduced this new policy following consultation with the Assistant Information Commissioner for Scotland and the Law Society of Scotland. As defence agents must be registered as data controllers if they process information electronically, COPFS must be satisfied prior to disclosure on pen drive that the agent has notified the ICO. Defence agents are, therefore, asked to sign an undertaking confirming that they registered prior to receiving their first pen drive. With effect from 31 October 2009, COPFS has adopted disclosure by encrypted pen drive as the primary method of disclosure and COPFS will cease to provide information hard copy, except in exceptional circumstances or where the information cannot be uploaded onto a pen drive. As a responsible public authority, COPFS will not provide disclosure information to any agent who refuses to provide the written undertaking confirming that they are registered as data controllers. As data controllers, solicitors also have a duty to comply with the seventh data protection principle by putting in place such measures as are necessary to ensure that all information they process is kept secure Legal requirement COPFS secure website The pen drive, however, is only the first stage in COPFS’s shift towards electronic disclosure. COPFS is working with an external software company to design a secure website through which information will be disclosed to the defence. An electronic disclosure file will be created on the COPFS database and then downloaded onto a secure disclosure website which defence agents can then access to obtain the disclosure information in respect of a particular case for which they have been instructed. Testing of this new website is currently underway with a small number of defence agents in Glasgow and it is anticipated that this new system will be rolled out in early 2010. There is no doubt that the introduction of these new processes by COPFS will be a culture change for all concerned, but it should provide a more efficient and secure method of disclosure of personal, and often sensitive, information to defence agents. Angela Farrell, Policy Division, COPFS The seventh data protection principle states: “Appropriate technical and organisational measures shall be taken against unauthorised or unlawful processing of personal data and against accidental loss or destruction of, or damage to, personal data.” December 09 theJournal / 45
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Page 4 and 5: Consultations Brian Dempsey’s mon
Page 6 and 7: CPD EVENTS Coming soon Please view
Page 8 and 9: People Onthemove ANDERSONS Solicito
Page 10 and 11: Letters Facing up to ABS I wholehea
Page 12 and 13: Feature Home reports One year after
Page 14 and 15: Feature Home reports Continued from
Page 16 and 17: Feature Repossessions The situation
Page 18 and 19: Feature Alcohol The Alcohol etc (Sc
Page 20 and 21: Feature VAT Debra Dougal points out
Page 22 and 23: Professional news Society New websi
Page 24 and 25: Professional news Society The reque
Page 26 and 27: Professional news Society The very
Page 28: Professional news Society Law refor
Page 31 and 32: Braemar Finance Develop your practi
Page 33 and 34: Mercedes-Benz UK Mercedes-Benz is p
Page 35 and 36: Trustis Smartcard Reader Law Societ
Page 37 and 38: no point in connecting with people
Page 39 and 40: privacy settings, it might be possi
Page 41 and 42: Case study 5 Practice E had acted f
Page 43: this vital element; it was not sugg
Page 47 and 48: Can rules be devised to protect the
Page 49 and 50: Professional briefing Discipline Tr
Page 51 and 52: Professional briefing Book reviews
Page 53 and 54: Twists and turns Be imaginative; an
Page 55 and 56: dodgy fit that could be a disaster.
Page 57 and 58: some criticism from solicitors and
Page 59 and 60: Sidelines Manus Straw Manus Straw u
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