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Question of Trade Mark Infringement - AdWords

Question of Trade Mark Infringement - AdWords


In a decision handed down by the ECJ 23 March 2010*, Google has escaped liability for trade mark infringement arising from its AdWords referencing service. It still seems open to a Claimant to pursue an advertiser using a keyword corresponding to the Claimant’s trade mark where there is difficulty for “an average internet user” to ascertain whether the goods/services advertised by reference with that AdWord are from the trade mark owner or not. Today’s decision relates only to Google’s liability as an “internet referencing service provider”.


In summary, the ECJ held:


1.    The proprietor of a trade mark can prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.


2.    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.


3.    If the service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored, that service provider 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.


* In Joined Cases C-236/08 to C-238/08 – reference for a preliminary ruling under Article 234 EC from the Cour de cassation (France).