Google France SARL v Louis Vuitton Malletier SA et al [2010] All ER (D) 23 (Apr)
This case was a worldwide example of a trade mark infringement claim by a trade mark owner against a search engine. Louis Vuitton was one of three companies that brought this case against Google with a view to obtaining a declaration that Google had infringed its trade marks once it discovered the Google search.
Louis Vuitton was the owner of the following trade marks:
- “Vuitton” - Community trade mark
- “Louis Vuitton” – French national trade mark
- “LV” - French national trade mark
In 2003, Louis Vuitton became aware that entry of keywords constituting the above trade marks, together with expressions indicating imitation such as ‘imitation’ and ‘copy’, into Google’s search engine triggered the display of links to sites offering imitation versions of Louis Vuitton products under the heading “Sponsored Links”.
To breach trade mark rights in France, the use of the trade marks:
- Must not be consented to by the trade mark owners
- Must take place in the course of trade
- Must relate to the goods/services which are identical/similar to those covered by the registration
- Must affect, or be liable to affect, the essential function of the trade mark as guaranteeing the origin of the goods/services by confusing the public.
Google was originally found “guilty” of infringing Louis Vuitton’s trade marks in 2005 by the Regional Court, Paris, and was then subsequently found “guilty” on appeal in 2006 by the Court of Appeal, Paris. Google then brought an appeal on a point of law (cassation) against the 2006 judgment, and the French Court of Cassation stayed the proceedings and referred several questions to the European Court of Justice (ECJ) for a preliminary ruling.
On 23 March 2010, the ECJ found that:
- Google had not infringed trade mark law as it was not using Louis Vuitton’s trade marks in a trade mark sense, but it could be held responsible if “having obtained knowledge of the unlawful nature” of advertiser activities, “it failed to act expeditiously to remove or disable access” to that advertising.
- An internet referencing service provider (such as Google) which stores, as a keyword, a sign identical to a trade mark and organises the display of advertisements on the basis of the keyword does not infringe trade mark rights.
- An advertiser that uses a keyword which is identical to a trade mark may infringe trade mark rights if the advertisement does not enable an average internet user—or enables that user only with difficulty—to determine whether the goods or services on offer originate from the trade mark owner or from the advertiser.
The ECJ ruled that when Google permits advertisers to select, as keywords, signs identical to trade marks, stores the signs and displays sponsored links on the basis of these keywords, Google is not using the signs in a trade mark sense and is not liable for trade mark infringement. In this case, although Google was creating technical conditions necessary for the use of a sign and being paid for that service, Google itself was not using the sign. This differs, however, to the ECJ’s third finding where advertisers would be using the signs in the course of trade and in relation to goods or services identical to those for which the trade marks were registered.
Currently, there is no Australian law that is specific to sponsored links and keywords. There is no doubt however that Australian courts will turn to this decision as guidance should an action arise on sponsored links and keywords. In the meantime, there are alternative causes of action that may assist a trade mark owner if its trade mark is being used as a keyword, such as:
- Trade Mark Infringement: Trade Marks Act 1995 (Cth)
- Sections 52 and 53: Trade Practices Act 1974 (Cth)
- Tort of Passing Off.
| What this means for you |
- There is no Australian law on sponsored links or keywords … yet. What this means though is that international decisions and opinions are of somewhat importance as they are likely to influence the Australian courts’ position should an action arise.
- There are, however, alternative causes of action that may assist a trade mark owner if its trade mark is being used as a keyword, such as: Trade Mark Infringement: Trade Marks Act 1995 (Cth), Sections 52 and 53: Trade Practices Act 1974 (Cth) and the Tort of Passing Off.
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Anita Siassios
Solicitor
Phone: 61 3 9602 9730
Anita_Siassios@tresscox.com.au
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