It has previously been decided that Google would not be liable for allowing trade marked brand names to be utilised by third-parties as sponsored/auctioned "AdWords" in its search engine, but it is less clear if those third-parties who purchase the AdWords are themselves liable for trade mark infringement.
The case
Interflora brought its case against M&S in response to M&S's bidding activity which was conducted to ensure that M&S weblinks to its flower delivery services were returned when web-users searched for "interflora" as a keyword. Whilst M&S did not use the trade mark "interflora" in its sponsored link, on its website or in any other way other than to return results when users inputted the search term themselves, Interflora sought to make M&S liable for its bidding activity. The case went to the High Court and the Court referred a number of questions in the case to the European Court of Justice (ECJ).
The Advocate General has now rendered his Opinion on the matter prior to full consideration by the ECJ (an opinion that is normally followed by the ECJ). The Advocate General grouped the questions into two groups:
- the first group related to classic trade mark infringement by use of the trade mark;
- the second group (referred to as the 'novelty' by the Advocate General) related to extended protection for trade marks with a reputation.
The Opinion
The Advocate General essentially rejected the second group of questions as saying the provisions concerning the reputation of the trade mark could not be invoked unless the trade mark appears in the advertisement itself (as opposed to being an 'invisible' keyword). However, in the first group, the Advocate General took into account Interflora's reputation as a network of deliverers of flowers and concluded that the essential function of a trade mark could be damaged in a situation where M&S might be perceived to be a part of that network and the trade mark was therefore infringed.
In situations where it was clear that the party bidding on the trade marked keyword was a third-party and/or competitor of the trade mark proprietor then it was not harmful for commercial alternatives to be displayed.
Legal Implications
The Advocate General's conclusion that a keyword identical to a trade mark is capable of trade mark infringement would seem to lead strictly to a situation where bidding on a keyword in relation to goods identical to those covered by the trade mark would be an infringement.
However, the Advocate General tempers this with the suggestion that if it is clearly a third-party then this will not be an infringement, although he seems to be reliant on customer knowledge of markets to determine whether it is clear if it is a third-party.
What does this mean for retailers?
Firstly, this is not yet law. It is only the Advocate General's opinion, although this carries great weight with the ECJ. Secondly, online traders should consider delaying bidding on trade-marked keywords until the decision of the ECJ is known. If the ECJ follows the opinion in full then it would appear to be lawful to bid on trade-marked keywords if it is obvious that the sponsored link is to a competitor of the trade mark owner.
Online traders would be wise to wait until the decision of the ECJ is made before settling on any advertising strategy that utilises third-party trade marks. Despite the risks, some traders continue to use other parties' trade marks in their advertising strategies and there will be countless others who will be waiting to see how the decision of the ECJ affects their position.
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