Kempner Robinson, the leading intellectual property law firm, says Google’s policy of allowing a business’s trade marks to be used by rivals as AdWords in Google searches will be challenged this month in the European Court of Justice (ECJ).
The ECJ’s Advocate General’s opinion on this is due on 4th June. Whilst the ECJ itself is not bound to follow the Advocate General’s opinion, more often than not, it does. The binding ECJ decision is likely in about 6 months time.
The decision may be that big brands and other trade mark owners can put a stop to businesses bidding for another company’s (usually a competitor’s) trade marks and using them to promote their own businesses - so that when a brand is searched on Google, the competing business comes higher up the search results than the trade mark owners own business, either in the “general” search results; or as a sponsored link.
Coincidentally, also on June 4th, the same day that the Advocate General’s opinion is due, Google will extend this scheme to 194 countries, so allowing companies to use their rivals’ trade marks for online advertising globally. Google will no longer consider requests from brand owners to take down sponsored links that use their trade marks.
Google has said: “As of June 4th, Google will no longer review keyword lists for monitored trade marks in these countries. This will bring these countries into line with the US, Canada, UK and Ireland who already employ this policy.”
Kempner Robinson partner Andy Robinson said: “Many companies don’t realise that their rivals are already using their trade marks to divert internet traffic away from their site through sponsored links. The law is currently unclear as to whether or not you can use a rival’s trade mark in this way to promote your own business via a sponsored link .
“Given the uncertainty, up until now there has been very little action taken by trade mark owners to stop rivals from using their trade marks to promote their competing businesses; or to defend their presence on the web from others using this method of advertising. However, the cases being heard in the European Court of Justice will test the law in this matter and will determine whether brands can use their trade mark rights to stop this activity by rivals.”
The luxury French brand Louis Vuitton has submitted its case to Europe’s highest court claiming that Google’s paid advertising links are devaluing its core brand and that a Google search for Louis Vuitton revealed three sponsored links to other retailers, one of them for ‘L.ouis vutton Bags’ (sic).
Mr Robinson said: “Louis Vuitton’s case is that this is about companies which have invested in design, marketing, creation and brand-building only to see a rival taking their intellectual property and profiting from it”.
“Brands object to others profiting from their investment in intellectual property and resent the fact that they have to enter into a bidding war with third parties in order to keep control of their brands in a search engine.
“Other companies, which deal in things like spare parts, accessories and services related to branded items see the use of the brand owners trade marks as a legitimate – even a necessary – marketing tool for their own goods and services.
“Many companies are taking a great interest on how the European Court of Justice will rule in this matter. The case follows two very recent decisions of the High Court in England (on 22nd May): one between L’Oreal and ebay, the other between Interflora and Marks & Spencer, in which the High Court has referred similar questions to the ECJ, to help ensure that the law around Europe is harmonised.”
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For further information contact:
GREEN Communications
Thomas Atcheson, Account Manager Tel: 0845 4503210 E: thomas@greencomms.com
Kathy Burke, Account Executive Tel: 0845 4503210 E: kathy@greencomms.com
Kempner Robinson
Andy Robinson Tel: 0870 361 4101 E: robinson@kempnerrobinson.co.uk
Richard Kempner Tel: 0870 361 4101 E: kempner@kempnerrobinson.co.uk
Editors Notes
Kempner Robinson is a specialist intellectual property law firm.
Kempner Robinson advises clients, including leading multinational IP owners, on their IP strategies and assists in the protection, exploitation and enforcement of IP rights world-wide. Visit www.kempnerrobinson.co.uk for more information.