EU court clarifies trade mark infringement in use of Google AdWords
A recent European court decision has caused European companies to think carefully about the type of keywords they use in their Google AdWords campaign.
Portakabin Ltd v Primakabin BV
In Portakabin Ltd v Primakabin BV, the court found that the use of a registered trade mark as a keyword search term infringed the trade mark owner’s exclusive rights if its use created confusion about the origin of the goods or services advertised or gave the impression that a reseller of the goods and the trade mark proprietor are economically linked.
Portakabin is a manufacturer of mobile buildings and the owner of the registered trade mark PORTAKABIN. Portakabin alleged that Primakabin (a manufacturer of its own mobile buildings and a seller and lessor of used mobile buildings including those manufactured by Portakabin) infringed its trade mark by using PORTAKABIN (and other similar words) as a keyword in its Google AdWords campaign. Portakabin argued that Primakabin was able to obtain a higher ranking in Google’s search results.
Primakabin argued that it was not using the term to denote the origin of its goods and was not gaining an unfair advantage through its use of the registered trade mark as a keyword. Rather, it was using the word PORTAKABIN to direct interested parties to its website, on which it offered for sale legitimate ‘used Portakabins’.
In an earlier decision (Louis Vuitton v Google), the European court found that use of a registered trade mark as a keyword by a third party amounts to infringement if the advertisement that the keyword is connected to creates an impression of an economic link between the goods and services of the advertiser and the trade mark owner, or if the ad is so vague that a reasonable attentive user cannot tell whether the goods and services originate from the trade mark owner or a third party.
Primakabin’s actual Google advertisement used the term ‘used portakabins’. The advertisement was displayed to Google users who had entered search terms such as ‘portakabin’, ‘portacabin’, ‘portokabin’ or ‘portocabin’. The advertising link, when clicked on by users, led to web pages on which Primakabin advertised the sale of second hand goods originally manufactured and placed on the market by Portakabin, as well as goods under other trade marks.
Portakabin argued that the advertising link established by Primakabin was misleading, that Primakabin derived a significant advantage from the use of the trade mark as a keyword and seriously damaged the reputation of the PORTAKABIN trade mark.
The EU court’s decision
The court decided that a reseller of second hand goods under another person’s trade mark will have difficulty communicating that information to potential customers without using that mark. However, the reseller must ensure that the use of the trade mark does not create an impression that the reseller and trade mark owner are economically linked. Furthermore, the reseller must not use the trade mark in a way which is seriously detrimental to the reputation of the mark.
While the European Court referred the decision back to the court in the Netherlands for judgement, it nevertheless provided guidelines to assist the national court in assessing Primakabin’s alleged infringing conduct.
On a practical level, an advertisement must clearly distinguish that the reseller is not associated with the trade mark owner, or, more specifically, clearly identify that the trade mark owner’s goods being sold through the reseller’s website are not being sold in association with the trade mark owner.
Australian trade marks and the Google complaints mechanism
Google currently offers Australian trade mark owners investigative services that allow the owner to lodge a complaint if a third party is using a registered trade mark as a keyword or in the text of an advertisement. If the investigations reveal that the registered trade mark is being used, Google will require the advertiser to remove the trade marked term from the ad text or keyword list and will prevent the advertiser from using the trade marked term in the future.
If you suspect that a third party is using your trade mark to improve its ranking in the search results, or to promote its own goods, please contact us regarding the most efficient way to remedy the situation.
Co-authored by M Hall.