The case answers when is a trademark not a trademark in the world on online conversion advertising

The case answers when is a trademark not a trademark in the world on online conversion advertising

The case of Google vs Louis Vuitton was last week decided by the European Court of Justice.

It concerned the manner by which Google sells keywords ('AdWords') as links to websites.

Google allows advertisers to select keywords. When the keyword is subsequently entered by a user of Google, the advertiser’s website will appear as a ‘sponsored link’ at the top of the search results. If a user subsequently clicks on that sponsored link, a fee is payable by the advertiser to Google.

The advertiser can improve its ranking by paying more for the use of the keyword. But Louis Vuitton complained that third parties were paying for keywords that were trademarks of Louis Vuitton.

Furthermore an advertiser could ‘buy’ the right to use such a keyword in combination with the word ‘copy’ or ‘imitation’ in order to be directed to a website that was selling counterfeit goods. Louis Vuitton complained to a French court that Google was infringing its trademarks.

Ruling to force change in practice

The European Court of Justice gave its judgment in this case, essentially deciding that Louis Vuitton can prevent use of its trademark as a keyword, without the consent of Louis Vuitton.

However, Louis Vuitton cannot directly prevent use of its trademark as a keyword by Google unless Google has “played an active role of such a kind as to give [Google] knowledge of, or control over, the data stored”.

While the first of these rulings seems clear, the second is not. It begs, among others, the questions: ‘how much knowledge’ and ‘how much control’?.

A similar case, emanating from the English court is due to come before the European Court later this year. That is the case of Interflora vs Marks & Spencer and Flowers Direct, in which Google allowed the keyword (and trademark) “interflora”, a trademark of Interflora, to be used by the defendants, Marks & Spencer and Flowers Direct.

Lawyers anticipate similar litigation

Interflora complained of Google’s practice of allowing others, in this case Marks & Spencer and Flowers Direct, to ‘buy’ the sponsorship so that the user was directed to the websites of Marks & Spencer or Flowers Direct, rather than to Interflora’s website.

On the basis of this decision in the Louis Vuitton case, it would seem likely that Interflora will be able to prevent this use by Marks & Spencer and Flowers Direct.

As to whether Google will need to change its practices, it is likely that the full story has yet to develop. There will undoubtedly need to be further references to the European Court, before the matter is fully determined.

Dai Davis, partner at law firm Brooke North, said: “Google and eBay benefit where a user is confused into buying counterfeit goods on the internet, believing them to be genuine goods. This case is the first nail, but only the first nail, in the coffin of that practice. The only thing that can be said with absolute certainty after today’s unclear judgement is that there is more litigation to come.”