Trademarks in New Markets: Simple Infringement or Cause for Evaluation?
| Author | Katja Weckström |
| Position | Lecturer in Intellectual Property Law, Faculty of Law, FIN-20014 University of Turku |
| Pages | 300-317 |
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300
Trademarks in New Markets:
Simple Infringement or Cause for Evaluation?
Katja Weckström
Lecturer in Intellectual Property Law
Faculty of Law
FIN-20014 University of Turku
katwec@utu.fi
Abstract. Are search en gines liable for trademark infringemen t for offering trademarks as
‘keywords’ to others than the trademark owner? Is the act of displaying or arranging the display
of an a dvertisement for identical or similar goods to that of a registered trademark that has been
selected and stored by an internet service provider infringing the trademark owner’s exclusive
right? Is the act of providing an information society service in e-commerce unlawfully encumbered
by a flood of trademark complaints? The answer depends on perspective. This article discusses
alternative ways of bridging grey areas between harmonizing legislation. It stops to ask whether,
instead of how rights apply in new settings. It discusses the process of decision -making; i.e. how
different approaches to interpretation affect different right positions. On the one hand, it considers
trademarks as property that confers on the owner a right to exclud e others, when harm is
established. It asks what property protection entails for trademark owners, in theory and practice.
On the other hand, it considers other interests explicit or implicit in legislation and weighs them
against the legitimate interests of trademark owners, in new settings. It compares these
approaches b y using concrete examples from EU cases and concludes that there are alternative
ways of bridging the gap between overlapping and conflicting d irectives.
© 2012 Katja Weckström. Published by JIC LT. All rights reserved.
1. Introduction
Are search engines liable for trademark infringement for offering trademarks as ‘keywords’ to others than the
trademark owner? Are buyers of trademarks as keywords prohibited from advertising their own goods or
services in Sponsored links? Does it make a difference, if t he goods offered for sale and advertised in a keyword-
triggered advertisement are legally obtained, sold and manufactured or counterfeit? These were the broad
questions that the ECJ considered in its Grand Chamber ruling in the so called Goog le Adwords –case.
1
T he
court was ho wever, forced to express its answer with specific trademark provisio ns; namely Articles 5 and 6 of
the Trade Mark Directive (89/104/EC
2
) on the one hand, and the general provisions o f the loosely harmonizing
E-Commerce Directive (2000/31/EC
3
) on the other. In between lies a grey area, which neither directive expr essly
considers; that of contributory infringement or seco ndary liability for trademark infringement a nd that of liability
for uses of trademarks on the internet and in particular, in inter net advertising. However, a third directive, the
1
Joined cases C-236/08, C-237/08 and C-238/08 Google France, Google Inc. v. Louis Vuitton Malletier, Google France v.
Viaticum Luteciel, Google France v. CNRRH Pierre-Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis, Grand
Chamber 23.3.2010, OJ C 134, 22.5.2010, p.2-3, ECR [2010] I-02417 (Google Adwords)
2
First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade
marks OJ L 40, 11.2.1989, p. 1–7 (Trademark Directive). Directive 2008/95/EC of the European Parliament and of the
Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version) OJ L
299, 8.11.2008, p. 25–33.
3 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information
society services, in particular electronic commerce, in the Internal Market OJ L 178, 17.7.2000, p. 1–16 (E-Commerce
Directive).
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Enforcement Directive (2004 /48/EC
4
) tilts the ga me in favour of trademark owners, by allowing for preliminary
injunctions to issue against intermediaries, seemingly, regardless of fault.
5
This article discusses alternative ways of bridging grey areas between harmonizing legislation. It stops to
ask whether, instead of ho w rights apply in new settings. It discusses the process of decision-making; i.e. how
different approaches to interpre tation affect different right positions. On the one hand, it considers trademarks as
property that confers on the owner a right to exclude others, when harm is established. It asks what property
protection entails for trademark owners, in t heory a nd practice. On the other hand, it considers other interests
explicit or implicit in legislat ion and weighs them against the legitimate interests of trademark owners, in new
settings. It compares these approaches by using concrete examples from EU cases and concludes that there are
alternative ways of bridging the gap between overlapping and co nflicting directives.
Is the act of displaying o r arranging the display of an advertisement for ide ntical or similar goods to that of a
registered trademark that has been selected and stored by a n internet service provider infringing the trademark
owner’s exclusive right? Is the act of providing an information society service in e-commerce unlawfully
encumbered by a flood of trademark complaints? The answer depends on perspective. Therefore, I argue that
courts should tread carefull y, when interpreting specific provisions that trigger interests that are not addressed in
the substantive legislation in question, where a more general consideration, in light of EU primary law, may be
appropriate.
2. Factual and normative background
2.1 Internet Referencing Services and Keyword Advertising
Google is the world’s largest search engine and the flagship of Google Inc., op erating with a mission “to
organize the world's information and make it universally accessible and useful.”
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The Google search engines
operate at www.google.com and 150 other d omains in different countries and languages. In addition, Google
offers many other services
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, applications
8
, software and search features
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. Google services are mostly free for both
private and business users, and Google finances its services through selling advertising space on its sites.
10
For
this purpose, Google operates Google Adwords, Google AdSense and sup porting tools such as Google Analytics,
Website Optimizer, Insights for Search and AdPlanner.
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The services that trigger questions of trademark la w are
the so called Sponsored links in search results and Google’s Adwords program. Although Google provides a
‘Trademark Complaint Procedure’, under which they investigate trademark complaints regarding the sponsored
links, Google does not offer a notice-and-take down service. Instead, Go ogle encourages trad emark o wners to
contact the individual advertiser that according to Google’s AdWor ds and AdSense Trademark Policy is
4
Directive 2004/48/EC of the European Parliament and of the Council of 29 of April 2004 on the Enforcement of Intellectual
Property Rights (Text with EEA relevance) OJ L 157, 30.4.2004, p. 45–86 (Enforcement Directive).
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Article 11 of the Enforcement Directive, Injunctions: Member States shall ensure that, where a judicial decision is taken
finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction
aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an
injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member
States shall also ensure that right holders are in a position to apply for an injunction against intermediaries whose services are
used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC.
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Company overview at http://www.google.fi/intl/en/corporate/ (last visited 15 Apr.2011).
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Google Maps, Google Books, Google News Archive.
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Gmail, Google Calendar and Google Docs.
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Google Toolbar, Google Chrome, Personalized Search.
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Opinion of the Advocate General in C- 236/08-238/08, Google v. Vuitton et. al., 22.9.2009, at 13 (AG Opinion Google
Adwords).
11
Company overview at http://www.google.fi/intl/en/corporate/ (last visited 15 Apr. 2011).
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