The last twists and turns of the Google saga

27 April 2007

Isabelle Leroux

In the last six months there have been new developments in the “Google saga” regarding the liability of Google for its AdWords services.

While the Paris Court of Appeal, in the very famous decision Google vs. Louis Vuitton Malletier dated 28 June 2006 had found that Google’s AdWords services infringed Louis Vuitton’s trade marks as such use amounted to infringement, regardless of the fact that Google had only associated the trade marks with the products of the proprietor, a series of decisions from the Paris Tribunal of First Instance has recently judged that such activity was not trade mark infringement but an act of unfair competition.

In a decision of 11 October, 2006 (Citadines vs Google), the Paris Tribunal of First Instance ruled that where a search engine proposed to an advertiser a keyword corresponding to a third party’s trade marks, there was no trade mark infringement. The Court relied on the principle of speciality according to which a trade mark is only protected against its use for products or services which are identical or similar to those covered by its registration. Yet, the Court found in this case that, as Google did not offer services which were identical or similar to those registered under Citadine’s trade marks (it offered internet services), Google did not infringe Citadine’s trade marks.

Nevertheless, the liability of Google was based upon on the ground of tort. Indeed, the Court found that by proposing to its clients a keyword protected by trade marks and carrying out no prior screening to avoid infringement, Google had assisted in infringement and was therefore liable under tort for this activity.

The Paris Tribunal of First Instance adopted the same approach in several decisions such as the decision Gifam vs Google of 12 July 2006, Iliad vs Google and Helios of 31 October 2006, Kertel vs Google of 8 December 2005, Auto Ies vs Google of Paris, 27 April 2006, ruling that the activity of Google was liable only under the law of tort.

This position is however contrary to the case law of the Paris and Versailles Court of Appeal, notably in its decision of 23 March 2006, which has ruled that Google was liable for trade mark infringement for its AdWords services.

So, infringement or unfair competition? Wait and see in the next issue.