Google’s right to ‘sell’ trade marked keywords: ECJ Advocate General hands down opinion

Back in July, Georgia Douglas blogged on the UK trade mark dispute between the US global flower delivery company, Interflora Inc, and British retail icon Marks & Spencer.  The dispute stemmed from M&S purchasing the Google AdWord “Interflora”, as well as numerous misspellings of that name, for its M&S Flowers Online service.

 Background

Across the English Channel, similar disputes have been bouncing around the French judicial system for a number of years.  Earlier this year, three cases were referred to the ECJ for guidance on how to apply specific provisions of EU trade mark law.  They involve three companies, including fashion icon Louis Vuitton, which instituted proceedings against Google for trade mark infringement on the basis of Google putting their trade marked names and phrases up for ‘auction’ as AdWords. 

In Australia, it remains Google policy not to allow the use of registered trade marks as AdWords.  As a result, an analogous trade mark dispute might not arise here.  However, the reasoning of the Advocate General (and, in the future, the ECJ) could have a bearing on current proceedings brought by the ACCC against Google for misleading or deceptive conduct.

The Advocate General’s opinion

The Advocate General found that there was no infringement.  Under the relevant EU trade marks directive, four things need to be established in this respect:

  • the use must be without the proprietor’s consent;
  • done in the course of trade;
  • related to goods or services which are identical or similar to those covered by the trade marks; and
  • there must be the likelihood of confusion on the part of the public as to the origin of the goods or services.

It is Google’s practice to allow advertisers to bid for AdWords which were, or corresponded to, a registered trade mark.  The Advocate General said that this was not a service identical or similar to the goods or services offered by the registered proprietors of the marks (i.e. third condition not satisfied).

It is also Google’s practice to display the Sponsored Links beside the ‘natural’ results when a particular AdWord is searched.  The Advocate General determined that this meant consumers were unlikely to be confused as to the origin of the goods or services (i.e. fourth condition not satisfied).  This is because, he found, Google users are used to “sifting” through search results – whether they are ‘natural’ results or Google’s Sponsored Links.  They are therefore sceptical of search engine results and do not automatically assume the origin of an advertiser’s goods and services.  Instead, Google users typically inspect the link, read its description and actually click on the link to an advertiser’s website before making an informed opinion as to the origin of the particular goods or services.

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