ECJ’s second (and unseen!) ruling on Google AdWords!

Written by Jean Philippe Bresson Tuesday, 30 March 2010 09:04

Our of the ECJ ruling on Google AdWords of March 23, 2010 we commented yesterday, the ECJ also issued another decision relating to Google AdWords on March 25, 2010, in Case C-278/08 that no-one seems to have reported….

As we said, “identity” (Identity of the marks / keywords and identity of the products of the services) was the master word of ECJ ruling of March 23 in joint cases C-236/08 to C-238/08 leaving the door open to “similarity” situations…

Actually, ECJ ruling of March 25 only deals with the entitlement of trademark owners to act against advertisers (it does not deal with Google liability like in the March 23 decision) but it says that trademark enforcement can be sought against them when the keyword is identical with or similar to the trademark.

The action of trademark owners is submitted to the same conditions in the rulings of March 23 and March 25 (i.e. the advertising must 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 by an undertaking which is economically connected to it or, on the contrary, originate from a third party).

That long term story has now started. Watch out!

ECJ’s first ruling on Google AdWords!

Written by Jean Philippe Bresson Monday, 29 March 2010 13:31

The highly awaited judgment of the ECJ on Google AdWords has been issued on March 23, 2010. The decision involved three joint cases originating from France (Louis Vuitton Malletier SA v. Google France SARL and Google Inc, Viatecum SA and Luteciel SARL v. Google France SARL and CNRRH and others v. Google France SARL).

In these French proceedings, the trademarks owners had brought Court proceedings against Google because the entry of their marks into the search engine triggered either to sites offering fake products (Vuitton) or to competitors’ websites of the plaintiffs under the heading ‘sponsored links’.

The First Instance Court and the Court of Appeal initially concurred in upholding trademark infringement against Google (and against the plaintiffs’ competitors involved in only one of the matters). The French Supreme Court deferred these matters to the ECJ in May 2008 for preliminary ruling.

This last March 23, the ECJ said that Google had not breached Community provisions on trademarks. For the ECJ, the storage of signs identical to trademarks as keywords did not consist in ‘use in the course of trade’. Google was operating ‘in the course of trade’ but was not making itself use of signs regardless of the commercial activity and economic advantage benefiting to Google.

The ECJ admits that Google can be regarded as hosting information in the context of AdWords with the view to fall under restricted liability provisions of Directive 2000/31. This is however left to the appreciation of national Courts which will have to analyze under a case by case basis whether Google plays an active role giving it knowledge of or controlling over the data stored.

As to advertisers, a trademark owner is in position to prohibit them from advertising goods or services identical to those run under the mark through the selection of a keyword identical to said mark and chosen without the consent of said owner. His ability to act is however limited to situations where said advertising does not or hardly allows an average internet user to ascertain that said goods or services originate either from them or from an undertaking economically connected to him or otherwise from a third party.

This is for sure the first stone of a long term story. Excluding Google from a trademark infringement claim is unlikely to be accepted by trademark owners. ‘Identity’ (of signs and of goods or services) was the master word of the decision and leaves the door open as to ‘similarity’ cases (of signs and/or of goods or services). A new character also appears in the decision (the ‘average internet user’) and a certain margin is left as to the difficulties that he may have for determining the origin of goods or services.

Trademark strategies including specific watches might be needed to be implemented at the moment given the above...

GOOGLE SUGGEST – ACT 2! More to come…

Written by Jean Philippe Bresson Thursday, 18 February 2010 10:29

First Instance Court of Paris December 4, 2009

Paris Court of Appeal, December 9, 2009

The First Instance Court of Paris upheld on December 4, 2009 that the suggestion “CNFDI arnaque” (i.e. “CNFDI rip-off”) displayed while searching for the plaintiff’s name on Google was an affront under provisions of the law of July 29, 1881, concerning the press freedom.

In a second matter, the Paris Court of Appeal confirmed on December 9, 2009, the findings of the First Instance Court as to Google’s liability as to the suggestion ““direct energie arnaque” (i.e. “direct energie rip-off”). The Court of Appeal however infirmed the previous decision as to the measure ordered. Google was requested to mention on its home page a general information enabling internet users to understand how is made up the list of suggestions. The Court of First Instance had previously ordered instead that Google deletes the expression “direct energie arnaque” from the list of suggestions.

These decisions concur in finding Google’s liability. The very first decisions issued during the first half of 2009 had actually handled the responsibility of Google in opposite directions. There is consequently at the moment less disparity than these very first judgments. The French case law is however still to be built up to be fully confirmed and new decisions are expected to come.

eBay: Act IV in the battle of LVMH

Written by Jean Philippe Bresson Thursday, 18 February 2010 10:25

First Instance Court just upheld last Thursday (Feb 11, 2010) in favor of LVMH, granting them damages of 200.000 €.

The circumstances of the matter are indeed quite similar with those of the earlier ruling of September 18, 2009. In the decision of September, several companies of the Louis Vuitton Group which sued eBay for trademark infringement because of the reservation on several search engines (GOOGLE, MSN and AOL SEARCH) of key words reproducing and imitating trademarks hold by these companies such as “Ange ou demon”, “Hot Couture”, “L’heure bleue”, “(parfum) Habit rouge” or “Kenzo” which drove internet users to eBay.fr and eBay.com websites. In decision of Last Thursday, LVMH also complained about reservations of keywords on various search engines.

The solution also seems to be the same between last Thursday findings and the findings of last September: use of the marks was then regarded as serving only a promotional purpose and excluded any informative approach. The judge considered that only an informative approach could have rendered necessary a reference to the marks involved.

So what’s new in comparison with these previous findings? First, no trademark of sub companies was involved. The claim was based on the reputed trademark, the company name, the board sign and even the domain name for the house mark and brand “LOUIS VUITTON” only. So everything was just around the “LOUIS VUITTON” sign but with a larger nature of earlier signs raised. Secondly, whereas the Court granted “only” a total of 60.000 € to Louis Vuitton group in September, the Judge allowed this time 200.000 € as damages.

More detailed are yet to come but this truly shows the definitive willingness of LVMH.