Google
& Co v. Trademark Owners:
The latest AdWord-News from Europe
4.1. The ECJ ruling -
overview
The
European Court
of Justice (ECJ) released its
ruling on two Adwords cases in March (Vuillton
and
Bergspechte). But that doesn't mean we know
if the use of a trademark protected term as keyword is legal or not.
Instead we are faced with new questions. I will provide a very short
overview, followed by a more indepth analysis from Maximilian
Schubert.
One thing is clear: The Court
found that Google does not use the mark in the course of
trade, even though it clearly draws economic advantage from selling
them to advertisers as keywords.
As for the advertiser, the
ECJ held that there is "use ‘in relation to goods or services’
within the meaning of Article 9(1)(a) of Regulation No 40/94 where
the sign so used is identical with a Community trade mark." But a
trademark owner can only exercise his right "in cases in which a
third party’s use of the sign affects or is liable to affect the
functions of the trade mark. It follows from that case-law that the
proprietor of the mark cannot oppose the use of a sign identical
with the mark if that use is not liable to cause detriment to any of
the functions of that mark. Those functions include not only the
essential function of the trade mark, which is to guarantee to
consumers the origin of the goods or services (‘the function
of indicating origin’), but also its other functions, in particular
that of guaranteeing the quality of the goods or services in
question and those of communication, investment or advertising."
Adverse effect on the function
of indicating origin:
A trade mark owner is entitled to
prohibit an advertiser from advertising, on the basis of a keyword
identical with that trade mark, in the case where that
advertisement does not enable an average internet user, or enables
that user only with difficulty, to ascertain whether the goods or
services referred to therein originate from the proprietor of the
trade mark or an undertaking economically connected to it or, on the
contrary, originate from a third party.
Adverse effect on the
advertising function
The ECJ held that
keyword advertising has no adverse effect on the advertising
function: "It
follows from those factors that, when internet users enter the name
of a trade mark as a search term, the home and advertising page of
the proprietor of that mark will appear in the list of the natural
results, usually in one of the highest positions on that
list. That display, which is, moreover, free of charge, means that
the visibility to internet users of the goods or services of the
proprietor of the trade mark is guaranteed, irrespective of whether
or not that proprietor is successful in also securing the display,
in one of the highest positions, of an ad under the heading
‘sponsored links’." So what? Is there trademark infringement, when
the trademark owner has no web site of his own (that affects e.g. 20
% of all companies in Austria), his web site was removed from the
Google index because of a violation of their terms or does not show
up on the first search result page?
Many questions remain
unsolved, but not surpsinigly, Google
still claims victory (Official
Google Blog): "Today, the Court
confirmed that Google has not infringed trade mark law by allowing
advertisers to bid for keywords corresponding to their competitors’
trade marks. It also confirmed that European law that protects internet
hosting services applies to Google’s AdWords advertising system. This is
important because it is a fundamental principle behind the free flow of
information over the internet."
