News

Google Adwords Escape Trade Mark Infringement

The Court of Justice of the European Union has this week ruled that it is not a trade mark infringement to buy, sell or use an adword (internet keyword). But companies like Google who sell internet keywords may be liable for trade mark infringement if they become aware that the use of a keyword may be unlawful.

This ruling relates to two French cases in which Google has been sued for trade mark infringement for providing adwords corresponding to registered trade marks of three companies, including Louis Vuitton. While the Court has confirmed that Google has not infringed any registered trade marks by allowing advertisers to obtain and use adwords corresponding to their competitors' registered trade marks, this exemption from trade mark infringement liability only applies if Google has lack of knowledge or control over the use of the adword in question. If Google were to learn about the unlawful nature of the use of an adword and fail to act expeditiously to remove or disable the adword, it may then become liable for trade mark infringement.

In our opinion, this decision may well lead to Google asking advertisers to confirm that they are entitled to use the adword which they wish to bid for. It also seems likely that Google will now act swiftly to remove or disable any adword which it is informed infringes a trade mark registration. We therefore suggest that trade mark owners investigate whether any of their trade marks are being used as Google adwords (or as keywords on other search engines) without their authorisation. If any instances of unauthorised use are identified we suggest that you inform Google, or the relevant keyword advertising service provider, and request that the adword/keyword is removed or disabled. This may help to provide you with grounds on which to sue the relevant service provider for trade mark infringement if the adword/keyword remains in use.

If you require any further information, or you think you have found an unauthorised use of one of your trade marks as an adword/keyword, our trade mark specialists will be happy to advise you.