In brief, the ECJ held that:

1. It would not be trade mark infringement to use a third party trade mark as a Google Adword, so long as it was clear (and not confusing) in the search results that the advertiser in question was not the source of the trade marked goods and/or services.
2. Google was not liable for registered trade mark infringement (on the basis that an Internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94).
3. The ECJ also stated that an ISP company, such as Google, would not be liable, so long as they didn’t play an “active” role of such a kind as to give it knowledge of, or control over, the data stored.  If the ISP has not played such a role, that ISP cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

Comment

This case gives some importance guidance on trade mark law in the UK and the EU on the subject of using third party trade marks as Adwords on Google.  Having said that, as with many questions of intellectual property rights infringement, there is still a significant grey area. In particular, you need to look at the advert in question (the one brought up by use of the third party trade mark as an Adword) and ask the following questions:

1. Could an Internet user be confused into thinking that the advertised goods / services are those of, or, are linked in some way, to the trade mark owner?

2. Is the trade mark expressly referenced in the advert itself?

If the answer to the above questions is “no” in all respects, then the chance of the use of trade mark (as an Adword) will be less likely to be considered an instance of trade mark infringement.

In most cases, adverts can be amended to stay on the safe side of the law of registered trade marks.  If you need any advice on registered trade mark law in this respect, please contact us.

Also, the third numbered point above of the Judgment is important in terms of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 (the ‘E-commerce Directive’), as it is the first ECJ on the hosting defence in the E-commerce Directive.   This defence can be crucial for ISPs in matters such as defamation and copyright infringement. Unfortunately, this ECJ decision leaves a lot of questions predictably unanswered, such as what conduct is required before it can be said that such conduct is something more than merely technical, automatic and passive, and, also what time period can be considered as “expeditious”?

One contentious issue which is bound to receive a lot of coverage, particularly  as the 2012 Olympics approach, is the issue of “ambush marketing”.  This is the technique of trying to associate a brand with a large event (such as the Olympics or the British Lions Tour of South Africa).

An interesting recent complaint before the Advertising Standards Agency (ASA) was a complaint that the makers of London Pride beer (Fullers) had gone too far in suggesting a link with the English Rugby Team.  On one of its adverts it had the slogan: “SUPPORT ENGLISH RUGBY” and made other references to rugby.  The Rugby Football Union (RFU) objected to this advert on the basis that it implied that there was an official affiliation between the RFU and Fullers (when in fact the RFU had already signed up a competitor of Fullers to be their “official beer”).

In its decision the ASA did not uphold the RFU’s complaint on the following basis:

The ASA noted the specific features that official sponsors were likely to include in their advertising, such as the claims “official partner” or “official sponsor”, were not included in the ad. We considered that readers were unlikely to be misled into thinking that Fullers were an official sponsor or partner of the England rugby team. They would expect an advertiser to state if they were an official sponsor and the ad did not claim that Fullers were. We also considered that the text “SUPPORT ENGLISH RUGBY” was not misleading, because Fullers did support English rugby as a sport and had done for several years. We concluded that the ad was not misleading and did not take unfair advantage of the reputation of the England rugby team.

Perhaps the RFU would have had a better case if it had registered ENGLISH RUGBY as a trade mark, particularly in view of the recent case of L’Oréal v Bellure as commented on in an earlier post.

Having registered trade mark rights might give you extra legal ammunition when considering your options in terms of tackling ambush marketing.  Conversely, when considering an ambush marketing campaign, an analysis of the trade mark portfolio of the potential opponent might help keep the campaign out of further legal hot water.  After all, there are some nastier things than a complaint to the ASA…

The settlement has been subject to significant controversy, with commentators suspicious of Google’s respect of copyright laws given their treatment of copyright works on platforms such as YouTube.

Speaking at the World Copyright Summit, Mr Sarnoff was reported as making a couple of specific justifications for the copyright deal with Google:

1. Books that are out of print are a “no-opoly”.  The deal with Google will create a market for these titles for the first time. The Register quite rightly makes the point that competition will only really happen if the deal with Google is not exclusive and other players can get into the market.  (See below for my comments on this point.)
2. The rights owners need to engage and regularise this new market before it goes the way of file sharing in the music industry.  In Sarnoff’s mind, making an early deal is the best way to make sure a new market develops in the proper way.

However, the terms of the settlement agreement with Google Inc, which is freely available on Google’s website (link), indicate (from a quick skim) that the settlement agreement is non-exclusive, so there does not appear to be anything preventing competing parties to Google Books from coming in and striking similar copyright settlements with these same claimants.  Indeed, Google may possibly be performing a public service by paving the way in this respect.

Commercial settlements of copyright disputes are generally to be welcomed.  They are often much preferable to clients, compared to the alternative, which is often very long and expensive copyright litigation proceedings with sometimes uncertain results.  Alternative dispute resolution enables parties to agree much more commercially acceptable agreements than a Court has the power to give.

Latest case does nothing to clear up legal confusion.  Whole of Europe now awaits the ECJ’s guidance.

The Interflora v M&S case is the latest decision handed down in the contentious area of companies purchasing competitors trade marks as keywords from Internet search engines.  Here, Interflora alleged (and M&S admitted) that M&S purchased a whole array of “INTERFLORA” keywords from Google, including common misspellings.  Interestingly, however, Google was not a defendant to these proceedings.

M&S, amongst other things, argued that the relevant law (Article 5(1)(a) or (2) of the Trade Marks Directive and Article 9(1)(a) or (c) of the CTM Regulation) was far from being acte clair, as had been evidenced by the fact that a number of national courts of EU member states had already found it necessary to refer questions to the ECJ.

The Judge (the Honourable Mr Justice Arnold) went on to list various national courts around Europe that had already requested preliminary rulings from the European Court of Justice on a number of the issues arising out of Google Adwords in particular:

1.    Case C-236/08 Google France v Louis Vuitton Malletier is a reference from the Cour de Cassation in France lodged on 3 June 2008. The hearing took place before the Grand Chamber of the ECJ on 17 March 2009 together with the next two references. The Advocate General’s Opinion in all three references is expected to be delivered on 4 June 2009.

2.    Case C-237/08 Google France v Viaticum, Luteciel is another reference from the Cour de Cassation lodged on 3 June 2008.

3.    Case C-238/08 Google France v CNRRH is the third reference from the Cour de Cassation lodged on 3 June 2008.

4.    Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbH is a reference from the Oberster Gerichtshof in Austria lodged on 26 June 2008. The hearing of this reference took place on 7 May 2009.

5.    Case C-558/08 Portakabin Ltd v Primakabin BV is a reference from the Hoge Raad der Nederlanden lodged on 17 December 2008.

6.    Case C-91/09 Eis.de GmbH v BBY Vertreibsgesellschaft mbH is a reference by the Bundesgerichtshof in Germany made by order dated 22 January 2009 and lodged on 6 March 2009.

M&S sought to have the whole case stayed pending the above references being handed down.  For various reasons, the Judge felt that this did not offer sufficient certainty that the ECJ would answer all of the questions raised by this case.  For example, there was the possibility that some references to the ECJ might be withdrawn.  Accordingly, the Honourable Mr Justice Arnold ruled that the parties should submit further questions for him to approve before formally referring them to the ECJ.

The parties were expressly referred to and asked to consider the Honourable Mr Justice Arnold’s other decision of the same date: L’Oréal v eBay, before finally committing themselves to an ECJ reference.

The Judge refused Interflora’s request that M&S be injuncted from using INTERFLORA keywords until the full trial of this issue, ruling that Interflora had not moved quickly enough or consistently enough in this respect, to justify what was in effect a late interim injunction application.

Now, Interflora will no doubt have to endure the painful process of hoping that the ECJ answers the relevant questions quickly and effectively.