Google Ad-Words As Intellectual Property
"Over the last few years, brand owners have increasingly been trying to use their trade mark rights to stop third parties using marketing techniques such as Google Adwords.
"Google Adwords and other similar systems allow companies to pay to appear in the sponsored links when a particular term is entered into the website search engine. For example, when Interflora is searched for on Google, Marks and Spencer appears as a sponsored link.
"Large brand owners have been trying to stop other companies purchasing "their" brand names, by putting pressure on competitors and in some situations even their own distributors, to stop using this method of marketing.
"An opinion issued by the European Court of Justice's advisor this week may be the first sign at European level that the courts are standing up to the power of the big brands.
"Although the court has not reached a final decision, the preliminary opinion in an action brought by the French fashion house Louis Vuitton against Google is that there is nothing in European trade mark law which prevents use of the Adwords system where the search term is a registered trade mark.
"The court highlighted that there are a number of ways in which a registered brand name can be used which do not infringe trade mark law. For example where it is used in relation to different goods and services to those for which it is registered, where it is used in relation to the sale of second hand goods, and where it is used for comparative advertising.
"Although some use of brand names on the internet does infringe trade mark rights, such as the sale of fake goods, the opinion indicates that the trade mark owner should sue the business offering the counterfeit merchandise rather than the search engine.
"Simply purchasing an Adword alone is unlikely to be enough to constitute trade mark infringement. If the opinion is confirmed by the court in its final decision, expected at the end of the year or in early 2010, it may put an end to some of the attempts to clamp down on the use of Adwords by brand owners and give resellers and competitors considerably more comfort in purchasing them."
Joanne Bone, head of Intellectual Property at Irwin Mitchell, comments on the recent Google-Louis Vuitton trademark dispute and its likely impact.