The European Court of Justice (ECJ) has today given its decision on the question of whether or not Google AdWords are a trade mark infringement.

This case had the potential to change dramatically the way we viewed the question of what constitutes ‘trade mark use’ and therefore ‘infringement’.

The full decision has not yet been published, but the court has issued a press release summarising the decision: http://curia.europa.eu/jcms/upload/docs/application/pdf/2010-03/cp100032en.pdf

In short, the use of a trade mark in a Google AdWord without permission is an infringement of that trade mark where it is impossible or difficult for the average internet user to determine the origin of the goods or services.

The court has noted that by purchasing an AdWord or similar which corresponds to another person’s trade mark, with the purpose of offering internet users an alternative to the goods or services of that proprietor, an advertiser uses that sign in relation to its goods or services.

If a trade mark has been ‘used’ to make it difficult or impossible for the average internet user to establish whether or not the goods or services offered in the advert originate from the trade mark owner, then an infringement occurs. 

This is in part due to the risk that the internet user may err as to the origin of the goods or services. The function of a trade mark is to guarantee to consumers the origin of the goods or services. Therefore, this risk undermines the function of the trade mark, and the court has therefore held that the trade mark has been adversely affected.

So is Google off the hook? Well, yes and no.

The court has made it clear that in principle, the provision of the service is not necessarily an infringing activity, but it has not quite let Google wriggle free.

It has stated that the ‘liability to [Google] may be limited’, but went on to say that on a case-by-case basis, the role of the ‘referencing service provider’ (in this case Google) must be considered.

If that role is purely automatic, technical, and passive, pointing to a lack of knowledge or control, then the provider cannot be held liable. However, if Google has knowledge of the unlawful nature of the activities, and it has failed to act expeditiously to remove or disable accesses, then it may be liable. 

We think that this may lead to the following:

• Google will require advertisers to confirm whether they have permission to use the AdWord, and will clearly differentiate rights holders from unauthorised users of trade marks
• Google will immediately remove or disable any AdWord which it is informed to be unlawful

We therefore suggest that rights holders take a close look at search engines by carrying out searches for their products and/or brands, then write to businesses that have purchased their trade marks as AdWords or similar; and to Google, requesting that the AdWord or similar is removed or disabled.