In this subsequent case, Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmueller (BergSpechte) owned a trade mark for travel arrangements. A competitor called trekking.at Reisen used particular marks that Bergspechte considered to be too similar to its own registered trade marks to generate paid-for ads using Google’s AdWords service. The case proceeded through the Austrian courts and the matter was referred to the ECJ to rule.

The ECJ has ruled that the EU’s Trade Marks Directive enables a registered trade mark owner to prohibit an advertiser from advertising, based on a keyword identical with or similar to the trade mark through an Internet referencing service (eg Google), goods or services identical with those for which the mark is registered, such that the advertising does not enable an average Internet user without difficulty from ascertaining whether the goods or services originate from the trade mark owner or an entity economically connected with it or instead by a third party. The selection of the keyword by the advertiser was use in the course of trade and in relation to its own goods or services, even where the mark did not appear in the advert itself. It is for the national court to decide whether the signs are sufficiently similar and also whether the average Internet user could ascertain that the advertiser is not connected to the trade mark owner.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘In other words, there is no advance from the Google / Louis Vuitton ruling. We don’t know how the national courts are going to interpret these rulings. Things are still unclear.’

The case arose from luxury goods supplier Louis Vuitton’s concerns over use of its trade marks on Google’s AdWords system by two competitors who were trying to sell competing products and by a third person who supplied counterfeit Louis Vuitton goods. The cases proceeded initially through the French courts and then ended up at the European Court of Justice. The ruling was keenly awaited because of its impact on the ability to protect your own brand and use others using the growing advertising medium that is Google. The ECJ ruled as follows:

• A trade mark owner could prohibit a third party from advertising a keyword identical to its registered trade mark where the advert does not enable a normally informed and reasonably attentive Internet user without any difficulty to ascertain whether the goods or services referred to in the advert originate from the trade mark owner or whether the parties are somehow economically connected. It is for the national courts to decide on each case whether a trade mark’s distinguishing function is affected.
• An Internet referencing service provider (such as Google) which stores a keyword identical to the trade mark and displays adverts based on that does not itself infringe the registered trade mark owner’s trade mark rights.  
• Google also has protection against someone else’s acts in misusing trade mark rights because it is a mere host of the information within the meaning of the E-Commerce Directive and did not play an active role as to give it knowledge over the data stored. The mere fact that Google’s service was subject to payment, Google set the payment terms and it provided general information to advertisers did not prevent Google from being exempt. It would lose that protection, though, if it did not act expeditiously in removing access to the data involved with the third party’s misuse of trade marks.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘This was a long-awaited ruling. Unfortunately, though, the result is not particular clear. Brand owners will be pleased that the ECJ agrees with protecting their brands; Google will be pleased that it is not responsible for third parties who pay Google money to advertise using competitors’ trade marks; and people will be pleased that they can use another party’s brand to advertise on the Internet as long as users are not left in any doubt as to the fact that the parties are not economically linked.

‘On the other hand: brand owners will be disappointed that competitors may be able to free ride on the back of their brand and push up the price that they have to pay Google; competitors will not be clear as to where the boundaries are for using someone else’s brand in search terms; and Google will be left unclear as to whether it needs to take down someone’s use of a keyword upon being told to do so by the brand owner (and failure to take down when it should have done could leave Google without a defence to being an innocent host).

‘The result is therefore somewhat confusing. Who has won and who has lost? It would have been more useful to have had some more guidance such as a clear statement as to whether use of the trade mark term in the result was ok or not. Instead, we will need to await further court rulings to clarify the position which goes to the heart of doing business online. This was a good opportunity for the ECJ to give clarity in an important commercial area, and they failed to do so.’