Sacrebleu! A blow to Google in Europe

No liberty, egality, and fraternity for Google in Paris this week.

According to this report, Google has suffered a loss in Paris.

A French court has fined search engine giant Google €350,000 and said that its search advertising business has infringed on two companies’ trade marks.

[…]

Tribunal de Grande Instance de Paris has ordered Google to pay €200,000 to Voyageurs du Monde (Travellers of the World) and €150,000 to Terres d’Aventure (Lands of Adventure), despite the judge saying that the commercial harm to the companies was marginal.

[…]

The Court said that though the commercial harm was marginal it had denied the companies some customers by directing them to other sites, French newspaper Le Figaro reported.

Google said that it has already appealed the case to the Paris Court of Appeal.

[…]

Last week a German court asked the European Union’s top court the European Court of Justice (ECJ) to rule on two similar disputes. It has asked the ECJ to rule on whether or not the purchase of a trade marked term as a keyword constitutes use of that trade mark.

Google’s AdWords program allows virtually anyone to purchase, as a “trigger” keyword for advertising, any word.  Their U.S. policy (which now apparently has been expanded worldwide) states only that trademark owners may demand takedown of any advertisement in which a competitor uses the owner’s trademark in the body of the advertisement shown to the web surfer only. Google claims that the “internal” use of purchasing a word to trigger an ad to appear is not a “use in commerce” covered by the Lanham Act.  There can be no consumer confusion, Google argues, because the ad clearly demonstrates that the goods and services derive from a different source, and/or provide the customer alternative products to the one that they may have been searching for (no different from, say, grocery stores selling shelf space for competitors products next to the “leading brand”).  I tend to agree and believe that, at least under U.S. law, no trademark infringement occurs if Google sells a trademark as an AdWord, so long as the advertisement itself does not contain the trademark term. Google’s now becoming aggressive in Europe, attempting to equalize its policies across the pond with those in the U.S.  We’ll keep our eyes posted.

Google AdWords fight in Germany moves to EU court

According to this article, Germany’s Federal Court of Justice has “sent” a case to the European Court of Justice to seek clarification [query: Is this like a federal court certifying a question to a state supreme court in the U.S.?] of whether the purchase of a competitor’s trademark as a Google AdWord constitutes “use” of a trademark under “EU trademark rules.”

Google's AdWords program is under fire in Europe

This issue has been hotly contested in the United States, because if the purchase of another’s trademark as a Google AdWord is not a “use in commerce,” (at least as long as the competitor’s trademark did not appear in the text of the Google ad), then that effectively forecloses trademark liability for the action.  Cases can be dismissed early on in the proceedings.  Google’s revenue stream is left intact.  One circuit court has bought that argument.  In the Second Circuit (which includes New York) courts have found that the mere purchase of the competitor’s trademark as a Google AdWord does not constitute a “use in commerce.” Courts in the rest of the country, however, have not been so gracious, and at least allow the cases to continue.  For example at least one federal district court in Minnesota (pdf) indicated that, based upon all of the circumstances, purchase of a competitor’s trademark as an AdWord could be an infringing use.

Google, perhaps to avoid personal liability, as implemented a DMCA-like “notice and takedown” procedure. Its US, UK, Ireland, and Canada policy states that if the competitor’s trademark appears in the header or body text of a competitor’s ad, the competitor may contact Google and the trademark term will be removed from the ad.  This policy tracks with a decision by a Court in the Eastern District of Virginia that determined that trademark “use in commerce” could exist if a competitor used a trademark in body text or headers of advertisements seen by consumers, but that “use in commerce” could not exist if the trademark merely triggered the ad to be shown.  In Europe, if a trademark owner discovers that a competitor has purchased Google AdWords containing the trademark, Google will disable those keywords.  Perhaps this suit tests whether Google can implement a US-style takedown.