We can all appreciate the importance of online advertising to the success of a business.Indeed it is understandable why you would want to register certain keywords relating to your goods and services as Google Adwords so that when a user searches for these terms, they are directed straight to your website.However, what happens when you register a keyword which just happens to be similar or identical to a third party registered trade mark? Is this registered trade mark infringement? Who is liable?
The European Court of Justice (ECJ) clarified in 2010 in the case involving, Google and Louis Vuitton, that Google itself would not be considered liable for registered trade mark infringement by offering its Adword facility. By simply offering the facility to promote brands by registering keywords, it was held that Google's actions would not meet the requirements of trade mark infringement. As to the liability of the party registering the trade marks as Adwords, the position remained undetermined. Then along came the case involving M&S and Interflora……
M&S registered 'Interflora' – a registered trade mark belonging to the florist company of the same name – as a Google Adword for the purpose of advertising its own flowers even although it is not connected with Interflora. Unable to determine whether M&S ought to be held liable for registered trade mark infringement, the High Court of Justice referred certain questions on the applicability of current trade mark law in this area to the ECJ. Once the ECJ has ruled on the questions referred to it, the liability of M&S (and similarly other registrants of keywords) is hoped to be clarified.
Although we are still waiting on the ECJ to rule on the questions referred to it, it is interesting to note that the Advocate General of the ECJ last week recommended that M&S is found liable for registered trade mark infringement, where the consumer was unable to determine whether or not the advert appearing as a consequence of the search was connected with Interflora i.e. if the consumer was confused as to the origin of goods in the subsequent advert, this would likely amount to registered trade mark infringement.
Although the Advocate General's recommendation is not binding and we still await the ECJ's formal decision, if the ECJ agree with this position, this will have significant implications for advertisers and brand owners alike. While we await the decision, and in order to avoid liability for registered trade mark infringement, advertisers should not register third party trade marks as keywords. If this approach is not commercially viable, all attempts should be made to make it clear to the consumer that the subsequent advert is not associated with the owner of the registered trade mark forming the keyword.
© Thorntons Law LLP
April 2011
Loretta Maxfield
This article is intended to be of general guidance only. For more specified and tailored advice, please contact a member of our IP, Technology and Media Team.