The highly awaited judgment of the ECJ on Google AdWords has been issued on March 23, 2010. The decision involved three joint cases originating from France (Louis Vuitton Malletier SA v. Google France SARL and Google Inc, Viatecum SA and Luteciel SARL v. Google France SARL and CNRRH and others v. Google France SARL).
In these French proceedings, the trademarks owners had brought Court proceedings against Google because the entry of their marks into the search engine triggered either to sites offering fake products (Vuitton) or to competitors’ websites of the plaintiffs under the heading ‘sponsored links’.
The First Instance Court and the Court of Appeal initially concurred in upholding trademark infringement against Google (and against the plaintiffs’ competitors involved in only one of the matters). The French Supreme Court deferred these matters to the ECJ in May 2008 for preliminary ruling.
This last March 23, the ECJ said that Google had not breached Community provisions on trademarks. For the ECJ, the storage of signs identical to trademarks as keywords did not consist in ‘use in the course of trade’. Google was operating ‘in the course of trade’ but was not making itself use of signs regardless of the commercial activity and economic advantage benefiting to Google.
The ECJ admits that Google can be regarded as hosting information in the context of AdWords with the view to fall under restricted liability provisions of Directive 2000/31. This is however left to the appreciation of national Courts which will have to analyze under a case by case basis whether Google plays an active role giving it knowledge of or controlling over the data stored.
As to advertisers, a trademark owner is in position to prohibit them from advertising goods or services identical to those run under the mark through the selection of a keyword identical to said mark and chosen without the consent of said owner. His ability to act is however limited to situations where said advertising does not or hardly allows an average internet user to ascertain that said goods or services originate either from them or from an undertaking economically connected to him or otherwise from a third party.
This is for sure the first stone of a long term story. Excluding Google from a trademark infringement claim is unlikely to be accepted by trademark owners. ‘Identity’ (of signs and of goods or services) was the master word of the decision and leaves the door open as to ‘similarity’ cases (of signs and/or of goods or services). A new character also appears in the decision (the ‘average internet user’) and a certain margin is left as to the difficulties that he may have for determining the origin of goods or services.
Trademark strategies including specific watches might be needed to be implemented at the moment given the above…