AdWords to Keywords “double identity” cases and the wrongful inclusion of an average consumer test
Litigation about AdWords and Keywords is not new. For rights holders it is a commercial practice which may (if those words are purchased by a non-rights-holder) serve to damage reputation and cause confusion by directing traffic away from its website (the shop window to the world) to (perhaps) a lesser quality website selling inferior goods and or services.
However it is the liability of internet service providers (ISPs) that has entertained the Court of Justice of the European Union’s (CJEU) business this year. This article outlines a number of those decisions with an eye on their potential practical impact finding that the CJEU has moved, in my view wrongly, to in no uncertain terms include an average consumer test into double identity cases which by their definition should not include such a test.
Let’s start with the so called ‘Google cases’
The Google cases comprises of three I will set out the facts of each before summarising the references and the judgment.
Google France and Google Inc v Louis Vuitton Malletier
The claimant is the proprietor of Community trade marks (CTM) for VUITTON, LOUIS VUITTON and LV (collectively “the marks”). The claimant found that users of Google’s search engine could enter the marks into the search bar and under the Sponsored Links section would be a number of companies’ websites that were actively engaged in selling/offering for sale imitation Louis Vuitton goods.
Google were also offering for sale keywords that contained, in addition to the marks, the words copy and imitation. Obviously, Louis Vuitton were not too happy with these companies being able to purchase keywords which comprised in whole or in part, the marks and so sought, inter alia, a declaration of infringement from the French court. The French court found in favour of the claimant. Google appealed to the Cour de Cassation, which court made a reference to the, at the time, ECJ. That reference concerned questions on the interpretation of certain provisions of the Trade Mark Regulation and Directive together with the E-Commerce Directive.
Google France v Viaticum Luteciel
The First claimant was the proprietor of three national marks. Via Google, users would type into the search bar terms representing the First claimant’s marks and under the Sponsored Links section was displayed a list of the First claimant’s competitors not good. At first instance the French court concluded that the First claimant’s marks had been infringed. On appeal to the Cour de Cassation a reference to the CJEU was made as to the interpretation of the Trade Marks Directive.
Google France v CNRRH
The claimants were owners and licenees of the national mark EUROCHALLENGES. The facts were roughly the same as Google France v Viaticum Luteciel in that users would enter EUROCHALLENGES into th searc bar and the Sponsored Links section would reveal a list of competitors. Again the French court concluded that the claimants’ marks had been infringed. On appeal to the Cour de Cassation that court referred a number of questions.
From the three cases the first question was this:
“Must Article 5(1)(a) and (b) of [the Trade Marks Directive] and Article 9(1)(a) and (b) of [the Regulation] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?”
The second question was this:
“In the event that the trade marks have a reputation, may the proprietor oppose such use under Article 5(2) of [the Trade Marks Directive] and Article 9(1)(c) of [the Regulation]?”.
Google France v CNRRH
The second question was this:
“Does the reservation by an economic operator, by means of an agreement on paid referencing, of a keyword triggering, in the case of a request using that word, the display of a link proposing connection to a site operated by that operator in order to offer for sale goods or services, and reproducing or imitating a trade mark registered by a third party in order to designate identical or similar goods, without the authorisation of the proprietor of that trade mark, constitute in itself an infringement of the exclusive right guaranteed to the latter by Article 5 of [The Trade Marks Directive]?”
In relation to the E-Commerce Directive all three cases asked this:
“In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under [the Trade Marks Directive] or [the Regulation] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of that service, within the meaning of Article 14 of [the E-Commerce Directive], so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?”
See further at Part II.
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