EU court clar­i­fies trade mark infringe­ment in use of Google AdWords

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A recent Euro­pean court deci­sion has caused Euro­pean com­pa­nies to think care­ful­ly about the type of key­words they use in their Google AdWords campaign.

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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.