French Supreme Court refers Google AdWords questions to European Court of Justice

11 August 2008

Graham Smith

The French Cour de Cassation has recently referred to the European Court of Justice several questions concerning the use of Google AdWords. These questions arise out of litigation against Google and others brought by trade mark owners objecting to the reservation by Google customers of search keywords matching, to a greater or lesser degree, their registered trade marks.

AdWords is Google’s well-known online keyword advertising service that allows its advertiser customers to display sponsored links and advertisements alongside, but separately from, the search results of Google’s search engine.

Trade mark owners in a number of countries, including France, have taken issue with some advertisers including a word that corresponds to their trade mark in the list of keywords that may trigger the appearance of an AdWords ad in response to the user’s search query.

Three cases have recently reached the French Supreme Court (Cour de Cassation): the Louis Vuitton, Viaticum and CNRRH cases. Rather than give an immediate judgment, the Cour de Cassation has as a first step asked for preliminary opinions from the European Court of Justice (ECJ).

The Cour de Cassation has requested the ECJ’s opinion on the following questions relating to the position of the search engine:

1. Should Article 5(1)(a) and (b) of the first Council Directive no. 89/104/EEC of December 21, 1988 to approximate the laws of the Member States relating to Trade Marks and Article (9)(1)(a) and (b) of Council Regulation no. 40/94 of December 20, 1993 on the Community Trade Mark, be interpreted as meaning that when a provider of a paid online referencing service makes available to advertisers keywords reproducing or imitating registered trade marks, and organises via a referencing agreement the creation and preferential display, based on those keywords, of promotional links towards websites which offer similar or identical goods to those covered by the trade mark registrations, that provider makes use of the trade marks that their proprietor is entitled to prevent?

2. In the event the trade marks are well known, can the proprietor oppose such use, on the basis of Article (5)(2) of the Directive, and of Article 9(1)(c) of the Regulation?

3. In the event such use cannot be prevented by the proprietor of the trade mark, in application of the directive and of the regulation, can the provider of the online paid referencing service be considered as supplying an information society service consisting in storing the information supplied by a recipient of the service, within the meaning of Article 14 of Directive 2000/31 of June 8, 2000, such that its liability cannot be asserted before it has been informed by the proprietor of the trade mark of the unlawful use of the sign by the advertiser?

The Cour de Cassation also requested the ECJ’s opinion on the following questions relating to the position of the advertiser:

4. Does the reservation by an economic operator, via an online paid referencing agreement, of a keyword triggering, in the event of a query using that word, the display of a link proposing connection to a website operated by that operator so as to offer goods or services for sale, of a sign reproducing or imitating a trade mark registered by a third party so as to designate identical or similar goods or services, without the authorisation of the proprietor of that trade mark, characterise in and of itself an infringement of the exclusive right guaranteed to the latter by Article 5 of the first Council Directive no. 89/104/EEC of December 21, 1988?

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