There have been a few recent headlines suggesting the law is not coping with the speed of technological change. Facebook posts from a juror in contempt of court? A footballer named on Twitter in breach of a super injunction? But the law does adapt, as a recent European case relating to sponsored links on websites shows.
Search engines commonly offer facilities for the purchase of advertisements, known as “sponsored links”, which relate to the search term and appear in prominent positions alongside the search results. The best known example is probably Google AdWords.
In 2 recent cases the Court of Justice of the European Union (in Luxembourg) has handed down rulings which impact on the use of “sponsored links” which include other people’s brands which are protected by registered trade marks. Each of these decisions responds to questions asked by the English High Court in order to clarify uncertainties in the application of European law.
L’Oréal v eBay
The first case related to L’Oréal’s complaint that the online auction site, eBay, has by its use of sponsored links directed users to goods that infringe L’Oréal’s registered trade marks. In particular this related to the offering of goods for sale in the EU under L’Oréal’s trade marks which were intended for sale outside the EU (known as “parallel imports”).
The Court reiterated its previous decisions that the operator of an internet market place (like eBay) does not “use” trade marks if it merely provides a service of enabling its customers to display logos and brands which are protected as trade marks as part of the customer’s business of selling goods.
However, the Court went on to indicate that if the website operator plays an active role that gives it knowledge of, or control over, the data relating to the offers for sale, or when it provides assistance which entails optimising the presentation of the online offers for sale or promoting those offers, then it may be liable for trade mark infringement (if the use of the branding in question would infringe someone’s trade mark).
Marks & Spencer v Interflora
The second case involves Marks & Spencer’s purchase of the Google Adwords including “Interflora” and related trade marks (which belonged to Interflora, the florists). The result was that a Google search for Interflora caused an advertisement to appear for Marks & Spencer’s rival services.
The Court of Justice has previously decided that there is no trade mark infringement on the part of the operator of the sponsored links service who sells keywords that include someone’s registered trade mark (this was last year’s decision in Google v Louis Vuitton).
However the question here was whether the party who bids or buys the keywords would be liable for trade mark infringement.
The Court’s decision is that a registered trade mark can be infringed by a competitor who selects a keyword which is identical to the registered trade mark. This will be the case where the use of such a keyword in the sponsored links service is liable to have an adverse effect upon the functions of the trade mark, namely:
indicating the origin of the goods in question (eg, that the flower delivery service is operated by Interflora); or
the proprietor’s use of the trade mark to build up and maintain its reputation with its customers
In addition, high profile trade marks (such as Interflora) may also be infringed if the use of keywords corresponding to the trade mark is in circumstances where the competitor is seeking to ride on the back of the reputation of the trade mark, or to dilute or tarnish that reputation.
However the Court also emphasised that its decision must be applied on a case by case basis by the national courts.
In both of these cases, it remains to be seen how the English High Court will apply these rulings from Luxembourg and whether the law has in fact been clarified as a result.
For more information or advice on the law and technology, contact
Iain Colville.
