SpicyIP has earlier blogged on the Google Adwords controversy wherein we had discussed the opinion of the Advocate General (AG) before the European Court of Justice in the dispute involving Google and Louis Vuitton. On the 23rd of last month, the ECJ held in favour of Google ruling that its sale of trademarks as keywords under its lucrative Adwords program is not violative of the right of the trademark owners.
The ECJ distinguished between use of the registered trademark by a third party for the purposes of providing information to a user on alternatives to the goods sold under the registered trademark, and use of the registered trademark by the third party in relation to its own products. It held that Google’s Adword program fell under the former and only the latter would constitute infringement of the trademarks chosen as adwords.
Therefore, if the third party’s goods appear as part of the main search results when a registered trademark is used as a search term, such use would amount to infringement of the registered trademark.
The underlying logic of the ECJ appears to be that only if the registered trademark has been used in a manner which makes it difficult for a user to identify the true origin of the goods, such use would attract claims of trademark infringement. This in a way is a restatement of the likelihood of confusion as applied to Adwords.
As to the question whether Google Adwords Program is entitled to be treated as an information service provider which is exempt from liability for infringement, the Court has referred the matter back to municipal Courts to answer.
SpicyIP will undertake a detailed analysis of the judgment soon.