On 23 March the European Court of Justice gave its decision on whether the use of a third party’s registered trade mark as a Google AdWord (or equivalent) can amount to trade mark infringement in the European Union. The decision has been highly reported, and there has been much discussion about what conclusions can be drawn from it. We thought we should set the record straight.
The court has confirmed:
- Use of someone else’s registered trade mark as an AdWord within the European Union can amount to trade mark infringement, giving a cause of action against the advertiser (as well as against Google (or the relevant search engine) if it fails to take prompt and appropriate action to remove the ad once it have been notified of the potential infringement).
- This is the case even if the trade mark in question does not appear in the ad itself. Simply purchasing the right from a search engine such that an ad is displayed when a trade mark is entered into the search engine can amount to infringement.
- The main factor is whether average internet users are able to tell whether the goods or services advertised originate from the owner of the trade mark. If they cannot, a trade mark owner may be entitled to prevent others from using his trade mark. An obvious example is where a third party uses someone else’s registered trade mark to sell ‘imitation’ or counterfeit products, as was alleged took place when Google sold AdWords identical to Louis Vuitton trade marks to its competitors.
Advertisers should therefore ensure that, where a competitor’s trade mark is used as an AdWord, internet users are not likely to confuse the goods or services advertised with those of the competitor. There is a greater risk of infringement where a third party’s ad suggests, falsely, that there is an economic link between that third party and the owner of a trade mark that has been used as an AdWord. This may in practice be difficult to do in the limited space provided with the usual size ad.
What this means for trade mark owners:
- If you suspect that a third party is using your trade mark as an Adword, you may be able to stop them using the law of trade mark infringement if it is difficult to tell from that third party’s ad that the goods or services advertised do not originate from you. You may also be able to require that the search engine stops the third party from using your trade mark as an Adword. You should:
- conduct checks to determine whether your trade marks are being used as AdWords, and if they are consider whether the relevant adverts mislead internet users;
- continue to use the search engine’s notification and take down procedures, so that the search engine is put on notice of the potential infringement; and
- write to the offending party in the usual way in order to enforce your rights.
- Where you use a third party’s trade mark as an AdWord, you may be able to reduce your risk of trade mark infringement by making it easier for internet users to tell that your goods or services do not originate from, and are not affiliated with, that third party.
While the decision does not make use of a third party registered trade mark as an Adword unlawful in itself, it is clear that advertisers will have to take care to avoid infringement. It doesn’t mean that third parties need your permission to use your trade mark as an AdWord, nor that Google are obliged to stop making your trade mark available as an AdWord.
For further information on anything contained in this briefing, please get in touch with your usual adviser at Kempner Robinson.