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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
Birgit Clark
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Christian Tenkhoff
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The AG's opinion on "AdWords/Keywords": the conclusions

Further to Frederic's earlier post (see here), Class 46 can now report on the conclusions of Advocate General Luís Miguel Poiares Pessoa Maduro in the "French AdWord/keyword referrals" (joined Cases C‑236/08, C‑237/08 and C‑238/08). After a quick perusal of the opinion this member of Class 46 believes that this opinion contains mostly good news for Google.

This Class 46 member has not had much time to study the opinion in detail but has noted that some of the AG's reasoning is rather similar to the approach traditionally taken by the German courts, i.e. paragraphs 89 - 92 (see below). In short: the average consumer will not be confused by sponsored links. Very interesting are also the AG's arguments with regard to Article 5(2).

89. Google’s search engine is no more than a tool: the link that it establishes between keywords corresponding to trade marks and natural results, even the more relevant sites, is not enough to lead to confusion. Internet users only decide on the origin of the goods or services offered on the sites by reading their description and, ultimately, by leaving Google and entering those sites.

90. Internet users process ads in the same way as they process natural results. By using AdWords, advertisers are in fact attempting to make their ads benefit from the same expectation of being relevant to the search – that is why they are displayed alongside the more relevant natural results. However, even assuming that the internet users are searching for the site of the trade mark proprietor, there is no risk of confusion if they are also presented with ads.

91. As with natural results, internet users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed in response to keywords corresponding to trade marks. The risk of confusion lies in the ad and in the advertised sites, but, as has already been pointed out, the Court is not being asked about such uses by third parties: it is being asked only about the use by Google of keywords which correspond to trade marks.

92. It must be concluded, therefore, that neither the display of ads nor the display of natural results in response to keywords which correspond to trade marks leads to a risk of confusion as to the origin of goods and services. Accordingly, neither AdWords nor Google’s search engine affects or is in danger of affecting the essential function of the trade mark.

It also appears from the above that the AG focuses mostly on the essential function of a trade mark as an indicator of trade origin rather than a trade mark's "other functions", such as the advertising function etc. (in contrast perhaps to the ECJ's recent decision in L'Oreal/Bellure...?) See paragraphs 92 pp and in particular paragraph 102 pp of the AG's opinion:
"...the protection afforded to innovation and investment, it is never absolute."
The Advocate General's conclusions are set out below (Para 155 of his opinion). Additions in bold by Class 46. A lot to read and discuss... :

".... I propose that the Court state in answer to the questions referred by the Cour de cassation:

(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’).

The full opinion can be retrieved by clicking here. The language of the opinion is English.

Posted by: Birgit Clark @ 12.29
Tags: adwords, ECJ reference for preliminary ruling,
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