Open UKLSR Volume 1(2) - Uklsa

16
The Legality of Google AdWords
views an advertisement, whether or not the advertisement leads to a sale and whether
or not the consumer remains confused at the time of any such sale. As noted by the
courts, although there may be no diversion of sales where initial interest confusion
arises, the proprietor may still be affected in 2 other ways, namely (a) a confusing
advertisement may affect the reputation of the trademarked goods and services and
(b) such confusion may erode the distinctiveness of the trademark. Thus, any use of
“AdWords” which results in the above-mentioned effects will be regarded as having
caused initial interest confusion.
II(b) – Section 10(1) – Confusion presumed; Issue is whether specific functions of
trademark are infringed
Under s.10(1), it is important to note that in double identity cases falling within the
section a likelihood of confusion is presumed. It is therefore immaterial whether there
is a likelihood of confusion in fact, although the jurisprudence of the ECJ does require
that there be an effect on at least one of three functions of the trademark (i.e.
indicating origin, advertising or investment). The law regarding these three functions
will be assessed as they pertain to Google AdWords in order to determine if Google
AdWords infringes s.10(1).
II(b)(1) – Indicating Origin Function
The indicating origin function is infringed if the advertisement (1) suggests that there
is an economic link between the advertiser and the proprietor of the trademark or (2)
while not suggesting the existence of an economic link, is vague to such an extent on
the origin of the goods or services at issue such that reasonably well-informed and
reasonably observant internet users are unable to determine, or enables them only
with difficulty, on the basis of the advertising link and the attached commercial
message, whether the advertiser is an independent third party or whether, on the
contrary, it is economically linked to the trademark proprietor. 17
Pertaining to AdWords, the fact that the advertisement appears immediately after the
trademark has been entered as a search term and is displayed at a point when the
trademark is (in its capacity as a search term) also displayed on the screen may cause
the internet user to be mistaken as to the origin of the goods or services in question.
This is however counter-balanced by the fact that the assessment of this mistake is
based on a reasonably well-informed internet user. 18 Thus, the fact that some internet
users may have had difficulty grasping that the service provided by the third party is
independent of that of the trademark proprietor is not sufficient basis for a finding that
the indicating origin function has been infringed.
II(b)(2) – Advertising Function
As for the advertising function, the ECJ has noted both in Google France 19 and
Interflora 20 that a trademark may also be used for advertising purposes designed to
inform and persuade consumers. The trademark owner may thus be entitled to prevent
17 See Interflora [2011] Case C-323/09, at paragraph 44.
18 ibid, at [50] .
19 [2011] Joined Cases C-236 to C-238/08.
20 [2011] Case C-323/09.