EU Advocate General opinion disappointing for brand owners

By Katie Bird

- Last updated on GMT

Related tags Trademark

In a disappointing decision for brand owners a European Advocate General has said buying and selling trademarks as keywords to trigger sponsored links is not an infringement.

Google’s Adwords system allows companies to purchase keywords which when entered into the search engine will trigger an advertisement.

A number of cases have been brought to court by brand owners claiming that the use of their trademark by a third party constitutes trademark infringement.

The Advocate General (Poiares Maduro)’s opinion does not mean brand owners will not be able to win cases like this. His view simply states that the buying and selling of trademarks as keywords does not constitute an infringement, and makes no comment on how they can be used afterwards.

Tom Scourfield, senior associate at law firm CMS Cameron McKenna, explained how the Advocate General’s decision attempts to leave legitimate uses open and avoid the prohibition of all trademark use in cyberspace.

Legitimate reasons for using brand names

“The Advocate General’s decision recognises that there may be a number of legitimate reasons why someone other than the trademark owners might want to use the brand name. It recognises that although it may be a trade mark, this does not give a company a monopoly over the word on the internet,”​ he told CosmeticsDesign.

The opinions of the eight Advocates General are called upon by the European Court of Justice (ECJ) to help deliver judgements on cases presented to it. Although the court is not obliged to follow their decisions, it does so in about 80 percent of cases.

Even if this judgement is taken on by the ECJ it is not the last word on such cases, explained Scourfield.

“Effectively the Advocate General’s decision is only half time,”​ he said.

“The real practical effect of this, if it is followed by the ECJ, is that if a competitor is doing something with your trademark the problem is not with Google but with your competitor. It is only half time, but Google have had the best of the first half.”

Blow for brand owners

This is likely to be a blow to brand owners as taking action against central targets such as Google would be easier than with larger numbers of individual infringers, as it would effectively cut the problem off at the source.

Separate cases that look at how the trademarks are used in advertisements after they have been purchased as key words have also been brought to the ECJ, although no verdict has yet been pronounced.

According to Scourfield, the Google Adwords saga remains far from resolved and is not likely to fade away as big interests are at stake.

“I think the inevitable consequence is that even if Google is vindicated by the European courts this will not be the end of the matter. There are significant interests and money at stake, they will simply move the enforcement efforts elsewhere.”

The European Court of Justice does not have to take on the Advocate General’s opinion but in the majority of cases it agrees.

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