French courts are known for regularly condemning not only advertisers who bid on their competitors trade marks in order to trigger ads but also the providers of sponsored links (mainly Google). Recent developments in French jurisprudence, however, showed a lack of unity on regarding the responsibility of providers of sponsored links : some first instance courts have ruled that such ad providers infringed the trade mark at stake, while other judges condemned Google - pursuant to the general principle of civil responsibility (Article 1382 of the French Civil Code: "Any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it."). One of the most famous case concerned advertising for blatant counterfeits of Louis Vuitton products. Before the court of appeal Google was ordered to pay 300,000 euros for damages (see Juriscom.net).

In its decision of 20 May 2008, the Cour de Cassation did not express its opinion on this case but rather decided refer the case to the ECJ and to ask the ECJ the three questions set out below. Here is an unofficial translation thereof -which is certainly far from perfect, considering the unusual length of the original sentences-.

1) Do article 5 § 1 a) & b) of Directive 89/104 and article 9 § 1 a) & b) of Regulation 40/94 on the Community Trade Mark have to be interpreted in the sense that providers of sponsored links services who make available to advertisers keywords that are identical or imitate trade marks, and organise trough a positionning contract the creation and privileged displaying based on these keywords, of promotional links toward site on which counterfeit products are proposed, make use of these trade marks which the trade mark owner is entitled to prohibit?

2) In case the trade marks are famous, could their owner prohibit such use on the basis of article 5 § 2 of the directive and article 9 § 1 c) of the regulation?

3) In case such use would not constitute a use that might be prohibited by the trade mark owner pursuant to the Directive and the Regulation, could the sponsored links provider be considered as a hosting service provider in the sense of article 14 of directive 2000/31 of 8 June 2000, so that its responsibility might not be questionned before it is informed by the trade mark owner of the illicit use of the sign by the advertiser?

The decision can be downloaded from pMdM.fr (in French).