More questions referred to the ECJ in Google Cases

In Google France v Vuitton, Google v CNHRR and Google v Viaticum Luteciel (May 20 2008), the French Supreme Court has referred questions to the European Court of Justice (ECJ) for a preliminary ruling in three cases involving Google’s AdWords policy (for further details about the Vuitton Case, see “Supreme Court refers questions on keying to ECJ”).
In each case, the trademark owner sued Google for trademark infringement on the grounds that Google's practice of selling certain terms as triggers for sponsored advertisements amounted to infringement of their trademarks. The Supreme Court tried to balance trademarks rights on the one hand, and Google's responsibilities as an intermediary service provider on the other.
In Google v CNHRR and Google v Viaticum Luteciel, the court sought to define Google's responsibilities in light of the relevant EU legislation. With regard to the use of trademarks as keywords, the court ruled as follows:
  • Google used the trademarks at issue for goods and services that did not fall within the scope of the trademark registrations.
  • According to the decision of the ECJ in Adam Opel (Case C-48/05), infringing use of a trademark must be assessed in relation to the goods and services for which the trademark is registered.
  • According to the decision of the ECJ in Céline (C-17/06), there is use of a trademark "in relation to goods" within the meaning of Article 5(1) of the First Trademarks Directive (89/104/EEC) where a third party uses the trademark in order to create a link between its commercial or business name and another party's trademark.
  • In the present case, the trademarks at issue were not used as a business or company name.
The court decided to refer questions to the ECJ for a preliminary ruling. In short, the court asked the ECJ whether unauthorized use of a trademark by a provider of sponsored links constitutes use which the trademark rights holder is entitled to prevent under the First Trademarks Directive.
With regard to Google's potential liability, the court referred the following question to the ECJ: if use of a trademark by a provider of sponsored links does not constitute use which the trademark rights holder is entitled to prevent under the First Trademarks Directive, can the provider benefit from the 'caching defence', as defined in Article 14 of the E-commerce Directive (2000/31/EC) (ie, the provider is liable only where the trademark rights holder has notified it of the illegal use of its trademark)?
Finally, in Google v CNHRR, the court referred the following question to the ECJ: where an economic operator reserves a keyword, by way of contract, to trigger sponsored advertisements for certain goods when internet users type a keyword that is similar or identical to a registered trademark for similar goods, does such an act constitute infringement of the trademark?
These cases show that the Supreme Court is reluctant to make decisions in keying cases, as the infringement is not committed directly by the defendant service provider. On the one hand, the French courts have interpreted the term 'counterfeiter' broadly - any party selling, transporting, importing or exporting counterfeit products may be regarded as a counterfeiter. On the other hand, the E-commerce Directive, which was implemented in France by Law 2004/575 - provides several defences for intermediary service providers. Therefore, the court is experiencing difficulty in issuing a decision taking into account the EU legislation and case law, as well as internet issues.
The ECJ must now answer several questions concerning the First Trademarks Directive, the Community Trademark Regulation (40/94) and the E-commerce Directive, as well as their potential interactions or conflicts. In particular, the decision of the ECJ will help national courts decide whether the liberal approach taken by the E-commerce Directive (which, in practice, gives quasi total immunity to intermediary service providers) may be challenged, or at least limited.
The decision of the ECJ will be eagerly awaited by trademark owners wishing to define their rights on the Internet more clearly.
Richard Milchior, Granrut Avocats, Paris

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