Victory for Google in trademarks battle

Internet giant Google today won the latest round of a legal tussle over trademarks in which luxury goods retailer Louis Vuitton is fighting to prevent search engines using protected brand names.

Louis Vuitton has already won a French court action, successfully claiming that Google acted illegally by allowing other companies to use the Vuitton names as a key search words for adverts on Google.

But today, in an interim legal "opinion" in the EU's highest court, an Advocate-General said Google had not infringed trademark rights by allowing advertisers to buy keywords corresponding to registered trademarks.

The French appeal court sent the case to the European Court of Justice, asking for a ruling on whether Google was breaking EU law by making trademarked keywords available to advertisers, and whether Google could be held liable for the content featured in it "AdWords" service.

Under current Google policy, a user searching "AdWords" with trademarked keywords finds the name of advertisers appearing on the right-hand side of the screen under the heading "sponsored links".

But in the case of many companies, searches with their trademarks have triggered the appearance in the sponsored links of the names of rivals.

And Louis Vuitton went to court complaining that some of the links appearing during a search using its name are for firms marketing counterfeit or replica goods.

The company says the "AdWords" service, established in the US and now being extended to Europe, enables advertisers to bid on terms like "Louis Vuitton fakes", and that the right to offer a trademarked name as part of a search advertising programme breaches EU rules.

But Advocate-General Poiares Maduro suggests in his legal "opinion" that "Google has not committed a trademark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trademarks".

The use of the trademarks is limited to the selection of keywords - an internal "AdWords" mechanism concerning only Google and the advertisers: "When selecting keywords, there is thus no product or service sold to the general public."

He goes on: "Such a use cannot therefore be considered as being a use made in relation to goods or services identical or similar to those covered by the trademarks. Similarly, advertisers themselves do not commit a trademark infringement by selecting in Adwords keywords corresponding to trademarks."

The Advocate General says Google, by displaying ads in response to keywords corresponding to trademarks, does establish a link between those keywords and the advertised sites selling products identical or similar to those covered by the trademarks.

But the "opinion" goes on: "However, in the view of the Advocate General, such a link also does not constitute a trademark infringement. In effect, the mere display of relevant sites in response to keywords is not enough to establish a risk of confusion on the part of consumers as to the origin of goods or services.

"Internet users are aware that not only the site of the trademark owner will appear as a result of a search in Google's search engine and sometimes they may not even be looking for that site.

"These users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed following the entry of keywords corresponding to trademarks."

Today's "opinion" will now be taken into account by a full panel of EU judges. Their final verdict is expected later this year or early in 2010.