The case of Louis Vuitton v Google involves trademark infringement. Proceedings were initially raised in France, but the French court referred a number of questions to the European Court of Justice ("ECJ") which has now, after a lengthy process, issued its decision.
The alleged violations against Google arose as a result of a service offered by Google called 'AdWords'. Advertisers buy keywords from Google and when the keyword is entered by a user of Google, the advertiser's website appears as a sponsored link at the top of the search results. Advertisers were buying Louis Vuitton's trademarks and when users selected the sponsored link they were directed to the advertiser's site which often featured counterfeit versions of Vuitton's products. Louis Vuitton claimed that Google's practice of allowing anyone to pay for keywords that were trade marks of Louis Vuitton was infringement of those trademarks. Google's position was that it was simply providing technology services to advertisers.
The ECJ ruled that the proprietor of a trade mark can prohibit an advertiser from using their trademark as an advertising keyword where the user could not easily ascertain whether or not the goods or services referred to originated from the proprietor of the trademark. They noted, however, that the issue with an internet referencing service provider is that they only store the keywords and organise the display of advertisements. As they don't use the trademark, an action cannot be raised against them for trademark infringement. The ECJ did not determine whether Google was a service provider who only stores information, but offered guidance to assist national courts in making decisions based on the circumstances of individual cases in their jurisdiction. National courts should consider whether the service provider has played a neutral or an active role in terms of knowledge of, or control over, the data stored. For example, the role played by Google in selecting a keyword for the advertiser and drafting the commercial message which accompanies the advertising link is relevant. If they have not played an active role they cannot be held liable for the data they store.
The main point which should be taken from this decision is that if you are using a trademark for advertising purposes, but you are not the proprietor of the trademark, you must make this clear. If it is ambiguous whether or not you are associated with the trademark holder and a user would have difficulty determining the origin of the goods or services they are purchasing, then you may find yourself engaged in legal proceedings.
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The material contained in this article is of the nature of general comment only and does not give advice on any particular matter. Recipients should not act on the basis of the information in this e-update without taking appropriate professional advice upon their own particular circumstances.
