The advertising, e-commerce, legal, retail and even
counterfeiting industries looked on in anticipation this week, as
the European
Court of Justice's Advocate General delivered his
opinion in the long running dispute between Google and Louis
Vuitton Mallatier, writes
Alison Bryce head of the IP & Technology team at Maclay
Murray & Spens LLP.
Siding with Google's assertion that its
'Adwords' service does not constitute trade mark infringement,
the opinion could increase the cost and complexity of luxury brand
owners' online marketing, while swelling the search giant's
coffers.
Louis Vuitton Mallatier,
among others, opposes Google's sale to third parties of trade mark
protected advertising 'keywords' such as 'Louis Vuitton'. When used
as a search term, these keywords return sponsored links to the
third parties' websites - some of which offer counterfeit goods -
alongside the main body of results.
In what will be a serious blow to the owners of luxury brands
worldwide, the opinion states neither the sale nor purchase of
trade marked keywords necessarily constitutes infringement. As
such, brand owners cannot prevent keywords being made available, or
restrict internet users' access to information. Part of the court's
reasoning is that modern consumers are sophisticated enough to
understand how 'sponsored links' work, without creating confusion
around the origin of particular goods or services.
The court's sole concession to trade mark owners is that they
still have the right to use national liability laws, if they can
prove a specific use has caused illegal damage their trade
mark.
Even so, the resounding upshot of the Advocate General's opinion
appears to be victory for Google and trade mark owners will be
disappointed and perhaps surprised with the apparent departure from
established trade mark protection.
The opinion supports Google's policy of no longer dealing with
complaints from trade mark owners over the use of keywords and
increases the potential for Google to secure revenue through the
Adwords service.
Brand owners could now find themselves in a very competitive
online advertising market, where keeping up with the crowd will be
more complex and expensive. On the other hand, some consumers will
consider the opinion a triumph for common sense, which rests well
with our media-savvy society.
Although Google will not have to change its current policies, it
would be wise to tread carefully until the final judgement is
given, rather than assuming carte blanche.
Despite the publication of the opinion, Europe is split on this
hot topic. Only the day before the release of the opinion, a
French
court ordered eBay to pay the Louis Vuitton Moet Hennessy group
€80,000 for using the group's trade marks as keywords.
This is not the conclusion of the issue and, although usually
very persuasive in subsequent cases, Advocate Generals' opinions
are non-binding and the final judgement, expected next year, could
sway in the opposite direction.
Alison Bryce is head of the IP & Technology team at Maclay
Murray & Spens LLP