LUXEMBOURG—In what is being called a landmark decision, the European Court of Justice (ECJ) ruled Tuesday that Google is not vulnerable to claims of trademark infringement when an advertiser purchases a keyword based on a competitor's trademark to trigger a search ad. However, Google must remove any infringing ads promptly when notified by brand owners.
In a blog post on CircleID, Mary Roach adds that a critical component of the ruling says that “individual advertisers could be held liable if ads triggered by a keyword involving a competitor's trademark are found to confuse consumers.
“So, what qualifies as consumer confusion,” she asks. “According to the ECJ, whose opinion applies to all 27 EU member countries, the search ad can be found to be confusing if it makes it ‘impossible, or possible only with difficulty, for average internet users to establish from what undertaking the good or services covered by the ad originate.’ More simply put, if an average internet user cannot tell from the search ad whether the goods or services advertised come from the trademark owner or not, then the ad is considered to be confusing. This goes to the core of what trademarks are all about in the first place: to guarantee consumers the origin of the goods or services.”
Roach adds that it is unclear how Google will respond to the ruling. “Currently, Google does not allow third parties to purchase the trademarks of others as keywords or use them in the ad text in all EU countries, except in the UK and Ireland. (In these two countries, third parties can bid on others' trademarks as keywords but cannot use them in the ad text of the search ads.) Given this ruling, however, it is not unlikely that Google may modify its policies impacting most EU countries to be consistent with the policies for the UK and Ireland and possibly even consistent with the Google's US policy, which permits third parties to use others' trademarks in both keywords and in the ad text, as long as certain criteria are met.”
In a March 23 post to the Google blog, Dr. Harjinder S. Obhi, Senior Litigation Counsel, EMEA, wrote, “Contrary to what some are intimating, this case is not about us arguing for a right to advertise counterfeit goods. We have strict policies that forbid the advertising of counterfeit goods; it's a bad user experience. We work collaboratively with brand owners to better identify and deal with counterfeiters.”
From Google’s point of view, extending trademark law to the use of keywords in advertising would only limit information (i.e. choices) available to surfers “by preventing other companies from advertising when a user enters their trade mark as a search query. In other words, controlling and restricting the amount of information… users may see in response to their searches.”
The ruling, it said, which also applies to other search engines such as Yahoo! and Bing, confirmed that European law that protects internet hosting services also 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,” wrote Obhi.
Despite the fact that Google already has in place formal complaint procedures for reporting search ad and counterfeit goods violations of its policies, the ruling nonetheless puts the burden of enforcement squarely on the shoulders of trademark holders.
“The onus,” concurs Roach, “is on brand owners to continuously monitor for the misuse of their brands in search ads, report abuses to Google and potentially go after infringing competitors on a case by case basis.”
For copyright owners working overtime in an often futile effort to protect their content from being pirated and repurposed on the internet, that obligation has an all too familiar ring.