Supreme Court refers questions on keying to ECJ

In Google France v Louis Vuitton Malletier (May 20 2008), the French Supreme Court has referred questions on the practice known as ‘keying’ to the European Court of Justice (ECJ) for a preliminary ruling.
Under French practice, several causes of action may be used to attack the sale and use of keywords by non-authorized third parties through Google’s AdWords program.
Until now, most of the decisions issued against Google have held that the unauthorized reproduction and use of registered trademarks amounted to infringement of the plaintiff’s marks. However, this cause of action is limited as internet users do not necessarily see the keywords, but only the advertisements and search results called up by them.
On June 28 2006 the Paris Court of Appeal held that Google's practice of selling certain terms as triggers for sponsored advertisements amounted to infringement of Louis Vuitton Malletier's trademarks. The court ruled that the sale of keywords associating the terms 'imitation', 'replicas', 'fake', 'copies' and 'knock-offs' with Louis Vuitton’s trademarks amounted to infringement (for further details please see “Google loses keying case”).
Google appealed to the Supreme Court. Before the court, Google argued that there was no use of Louis Vuitton’s trademarks on its part, as the keywords were chosen by the advertisers.
The Supreme Court decided to stay the proceedings and refer three questions to the ECJ. In short, the court asked whether by offering for sale keywords reproducing or imitating registered trademarks, Google could be regarded as using these trademarks without authorization.
The decision of the ECJ could have a significant impact on the strategies of trademark owners in keying cases. Arguably, Google’s practices are nothing short of trademark infringement and there is no justification for the AdWords program, which diverts internet users from their intended destination when searching for specific or genuine trademarked products or services.
Should the ECJ decide that Google’s actions do not amount to trademark infringement, other arguments have proved successful. First, plaintiffs could sue Google on the basis of civil responsibility. In previous cases, the courts have ruled that Google was liable for not creating a system capable of checking that keywords did not infringe the rights of third parties. For example, on July 12 2006 a first instance court held that Google’s actions did not amount to infringement of the plaintiff’s trademarks, but found against Google on the basis of civil responsibility.
In addition, plaintiffs may also argue that Google’s actions amount to unfair competition. Until now, this ground of action has been upheld in conjunction with either trademark infringement or civil responsibility claims. It succeeded where the plaintiff established that certain keywords were purchased only for the purpose of diverting consumers to a competitor’s website.
Lastly, some courts have found against Google on the basis of misleading advertising. In these cases, the courts held that the sponsored links delivered in response to a keyword search misled consumers into believing that the trademark owner and the advertisers were economically linked. The courts concluded that consumers were entitled to expect to be directed to websites selling authentic trademarked goods when clicking on the sponsored links.
The decision of the ECJ in the Google v Louis Vuitton Case is thus awaited with considerable interest.
Franck Soutoul and Jean-Philippe Bresson, Inlex IP Expertise, Paris

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