AdWord use of trademarks not infringing, Google not liable

Today Attorney-General Poiares Maduro published his advice to the ECJ in the famous cases between Google and (a.o.) Louis Vuitton. LVMH had sued Google, because Google allowed third parties to use LOUIS VUITTON as AdWord. The AdWords linked to sites on which infringing bags and other luxury goods were being sold, and to sites of competitors. The Attorney-General does not consider this use as a trademark, and therefore no trademark infringement. This could be different if the trademark is actually mentioned in the text of the AdWord ad, but this was not the case. Trademark owners can easily complain with Google about use of their trademarks as AdWords. Google often deletes that AdWord (beware: for .com and .uk sites other rules apply). Where many Dutch judges consider this trademark use as AdWord (by competors or by infringing sites) as a trademark infringement, the Attorney-General puts more weight to the importance of internet traffic. This should be allowed according to Poiares Maduro. In the Benelux we also know an addition ground for the trademark owner to base a claim upon: article 2.20 (1)(d) of the Benelux Convention on Intellectual Property, under which so called ‘other use’ of a trademark can be stopped. This could also be use as AdWord. Whether this is the case needs to be decided by the ECJ in another case referred by the Dutch Supreme Court (Portakabin/Primakabin). This authority by the trademark owner does not exist in the rest of Europe. Furthermore, it is important that the Attorney-General Poiares Maduro considers the Google search engine as an ‘information society service’ such as internet service providers. Such independent service providers are, as a general rule, not liable if it concerns an automatic procedure and if they have nothing to do with the content itself (of course this is highly simplified, the rules are more delicate than this). According to the Attorney-General Google cannot call upon the limitation of liability as regards the content of AdWord texts, as Google has its own financial interest with every click on an AdWord ad. This liability is subject to national law, so the Attorney-General advises. Hopefully in 2010 the ECJ will render a judgment. It is not bound to the Attorney-General’s advice. Until that time the Dutch court will have to find its own judgments. For the short term the trademark owners authority under Benelux law to act against ‘other use’ of a Benelux trademark has won importance. Maarten Haak

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