European Union: Keywords And Trade Mark Infringement In The EU

Whether a registered trade mark owner can stop another party using that mark as a keyword in an internet search engine is not yet clear and national courts of member states take different approaches. We look at some recent decisions.

Background

Search engine providers, such as Google and Yahoo, sell keywords to potential advertisers so when an internet user uses a keyword as a search term, not only will the search results appear, but also an advertisement for the keyword buyer, usually containing a link to its website. Disputes can arise when a keyword is the same as, or similar to, another party's trade mark.

France1

In February, the Paris Court of Appeal held (reversing the first instance decision) that Google was liable for trade mark infringement because its AdWords "generator program" suggested trade marks as "relevant" in relation to a specific generic word. For example, the word "iron" may have suggested the registered trade marks ROWENTA and CALOR. The court said that it was irrelevant that the suggestions resulted directly from statistical results of actual searches. The action was taken by an association of brand owners in the domestic appliances market and 28 of its members, and Google was ordered to pay €10,000 in damages to each of them. The first instance court had found Google liable on the basis of the general principles of civil liability but not liable for trade mark infringement.

Germany 2

Also in February, the Higher Regional Court of Frankfurt held in preliminary injunction proceedings that a party using another's registered trade mark as a Google AdWord was not infringing the trade mark, provided the advertisements generated by the keyword were presented separately from the search results. The court said that the use of a trade mark as a Google AdWord did not constitute trade mark use; consumers would easily recognise the advertisement as being from a competing company and not think there was a connection with the trade mark owner. The court also did not consider this was an act of unfair competition. No appeal is possible from this decision.

Italy 3

Last October, the Court of Milan gave what was probably the first (and so far the only) Italian court decision on this issue. The court held in an interim decision that use of a registered trade mark as a keyword was not trade mark infringement by either Google or the advertiser, because they were not using it to indicate the origin of their goods or services. It was, however, an act of unfair competition by the advertiser.

The court in this case applied similar principles to those used by other Italian courts in cases related to metatags.

The Netherlands 4

In a decision on the merits, the Hague District Court held in January that a company selling second hand goods did not infringe a registered trade mark by using that word as a keyword to generate an advertisement including the fact that it resold the trade mark owner's goods. This was because the trade mark owner's rights were exhausted. The interim decision in this case reached the same conclusion, but that has been appealed to the Supreme Court. However, in the appeal of the interim decision the Amsterdam Court of Appeal held that the advertisement must deep link to the page offering those goods, whereas the Hague District Court held that was not necessary.

In this case no infringement occurred as the branded goods were being resold. However, in other cases Dutch courts have generally held that use of a trade mark as a keyword will infringe the trade mark; although it is not being used to distinguish goods or services it will infringe under a provision of Benelux law implementing article 5(5) of the Trade Mark Directive5.

UK 6

In February, the English High Court held that Yahoo's keyword service did not infringe the claimant's trade mark, and awarded Yahoo summary judgment. The court held that Yahoo had not infringed the claimant's registered trade mark MR SPICY by allowing a search for "Mr Spicy" to produce sponsored links to two supermarkets. In this case Yahoo had not even sold MR SPICY as a keyword. The ads were triggered by "spicy" alone, because "spicy" and phrases containing spicy were keywords. But, in any case, Yahoo was not "using" the mark (the internet user was). And even it was, it was not an infringing trade mark use (following Arsenal6): even if Yahoo was using the trade mark for goods or services identical to those for which it was registered, that could not "affect the owner's interests as proprietor of the mark, having regard to its function"7 the search results did not refer at all to the claimant's business or products.

Also in the UK, Google announced on 4 April a change in its UK and Ireland AdWords complaints policy to be in line with its approach in the US and Canada. It will now not monitor or restrict keywords for advertisements served to users in the UK and Ireland, and will not deal with complaints that a keyword infringes a trade mark. From 5 May keywords that were disabled as a result of a trade mark investigation will be derestricted and start to trigger advertisements.

Footnotes

1 1 February 2008 Gifam and others v Google Inc, Google Ireland and Google France Paris Court of Appeal, 4th Chamber Section B.

2 26 February 2008 Oberlandesgericht Frankfurt am Main, case 6 W 17/08.

3 15 October 2007 Key 21 v Mulitiutility and Google Italy.

4 9 January 2008 Portakabin Limited v Primakabin BV District Court The Hague, HA ZA 06-1854.

5 Directive 89/104/EEC.

6 20 February 2008 Victor Andrew Wilson v Yahoo! UK Ltd and Overture Services Ltd [2008] EWHC 361(Ch). 68 12 November 2002 Arsenal Football Club plc v Matthew Reed C-206/01.

7 Arsenal paragraph 54.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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