Google’s liability under EU law for trademark infringements committed through the AdWords system

Abstract

Trademarks represent one of the fundamental elements of maintaining an active competition on the market. Therefore, it is natural that trademark protection should be under constant reconstruction and amendment in accordance with changes and developments in the business world. The most extensive development over the past years occurred through the rise of the Internet, which resulted in a changed focus point for trademark protection as well. While general exclusive rights retain their importance, new challenges have surfaced with the rise of the Internet. These problems have called for a re-interpretation of trademark laws, new legislation and an evaluation of conflicting rights and interests in light of business developments. Even though current legislation has been improved and is increasingly fitted to this new environment, the Internet still challenges trademark protection. One of the more troubling conflicts which have arisen is manifested in the Google search engine and the operation of advertisement software connected to the search engine. Through its function as a global search engine, Google has managed to attract a vast number of advertisers by selling search terms, or keywords, through a software called AdWords. The AdWords program has, however, been greatly criticised by trademark owners claiming it is an infringement tool. The alleged infringements that have been committed through the Google AdWords software have raised concerns by trademark proprietors that with the Internet, they are vulnerable to attacks on their marks and that without proper reaction by the courts, their rights will be severely diminished. On the other hand, the AdWords cases have been marked as an attempt of trademark holders to expand their rights even further and have raised concern that extended trademark protection would be established at the cost of restrictions on freedom of expression and commerce. As Google AdWords has caused considerable debate, it does not come as a surprise that several cases regarding its legality have been presented in national courts, with many of them reaching the European Court of Justice (ECJ) for a preliminary ruling. However, most of the cases have been restricted to the question of whether advertisers using the AdWords software are committing trademark infringements and thus have not considered the liability of Google as an Internet service provider (ISP). Until now, only three cases specifically discussing ISP liability in connection with the AdWords system have been referred to the ECJ. In the following text, these three cases regarding Google’s liability will be discussed, addressing the liability question from both a primary and a secondary infringement point of view. Furthermore, European Union (EU) legislation and directives will be examined, and light will be shed on the conflicts of interest between parties. European national courts have delivered diverse opinions on the matter, and it is clear that the ECJ will have decisive effect on the future of electronic use of trademarks, as the ECJ’s judgement is binding on national courts. Furthermore, the ECJ will have decisive effect on the future of Google as well as the future of other comparable ISPs, as its judgements will serve as precedent for similar trademark uses. The article will therefore emphasise Google’s position under EU laws and the guidelines provided by the ECJ. The aim will be to answer the question whether the use by Google of keywords corresponding to trademarks in its AdWords advertising system constitutes an infringement of those marks. Relevant sources regarding the legality of the AdWords system under EU law are scarce, as the ECJ judgement is quite recent. Therefore, the judgement itself as well as legislation are at the centre of the following discussion.