Use of keywords by Google in its AdWords advertisement system should not be seen as trade mark infringement, in the Opinion of the Advocate General (AG) of the European Court of Justice (ECJ). Google should not, however, be able to shelter behind the 'hosting' provisions of the Information Society Directive.

Background

It is well known that Google Inc gives internet users free access to the Google search engine to search for information. When users enter keywords into the engine, they receive a list of 'natural results'. Those natural results are supplemented by links to advertisers' sites. Where the keyword is a protected trade mark, neither the natural results, nor the advertisements, will necessarily link to sites controlled by the trade mark proprietor.

Advertisers using Google's AdWords service choose and pay for keywords. Their advertisement is then displayed alongside the natural results whenever a user types those keywords into the search engine.

 

In the cases before the ECJ, Google France v Louis Vuitton and two others, the keywords included the well-known marks LOUIS VUITTON and LV. When the user typed 'Louis Vuitton' or 'LV' into the search engine, they triggered the display of advertisements not only for competitor sites, but also for sites selling counterfeit Louis Vuitton products.

The French courts had to consider whether Google's AdWords service was capable of infringing the trade marks. Other countries, including the UK, Germany and Italy, had held that they did not. The French Cour de cassation chose to refer questions to the ECJ.

The AG's opinion

Preventing Google from selling keywords, just because they might contribute to infringements by third parties, would require the ECJ to expand the scope of trade mark protection significantly. The AG does not believe the ECJ should do this.

When Google allows the selection of keywords, or displays advertisements in response to those keywords, its use is the same whether or not counterfeit sites are involved. All trade marks can be legitimately used by competitors, for example for purely descriptive purposes, or for comparative advertising. It would be absurd to allow use of the marks on such sites, but to ban Google from displaying links to them.

When AdWords offers trade marks as keywords to advertisers, the keywords stand alone, so there is no use 'in relation to' goods or services. When the keywords are used by Google to display competitors' advertisements, there is use in the course of trade, in relation to goods or services, but that is equally true of the natural results. There is no risk of confusion in either case, and Google's service does not affect the essential function of a trade mark as a guarantee of origin, nor any of its other functions.

However, Google's AdWords service offers more than a neutral information service, as Google has a direct, financial interest in the internet users clicking on the resulting advertisements. That takes it outside the scope of the protection given to internet hosts under the Information Society Directive.

The commercial view

The AG spells out the consequences which would follow from a judgment of the ECJ. Either trade mark owners will be able to stop the AdWords service, which would nip the use of the keywords by infringers in the bud, but would cripple information delivery systems. Or keywords will continue to be used, and trade mark owners will have to point to specific instances of trade mark use to give rise to liability on the part of Google, via national laws on contributory infringement.

Our Comment

Whether the law requires a trade mark owner to show damage to the essential function of the trade mark where the competitor is using the identical mark in relation to identical goods or services, is a matter of controversy. To block Google's AdWords service because of the abuse which might be made of it would be draconian. But the AG's warning that Google might still be liable as a joint tortfeasor in particular circumstances should not be overlooked.