Google trademark ruling places onus on brands

Louis Vuitton search on Google UKThe European Court of Justice ruling in favour of Google in the long-running legal battle over the use of trademarks as keywords appears to give trademark owners some level of  protection.

Hamish Porter, an IP lawyer with Field Fisher Waterhouse, told Travolution that although the decision was set in stone in terms of allowing Google to sell trademarks as keywords, trademark owners could still challenge the search giant on inappropriate use.

He explained: “It appears as if the judgment is saying that while Google itself isn’t infringing the trademark owner’s rights by selling it as a keyword, if that owner tells Google that their trademark is being misused by the person buying the keyword, Google has to take it down.

“The responsibility of monitoring has shifted from Google to the trademark owner themselves,” he added.

Trademark owners are also able to take action against anyone misusing their brand on Google. In such cases, Google itself would have no liability.

Porter suggested that the decision might give Ryanair another avenue to pursue screenscrapers.

“Ryanair is quite clear that it doesn’t want to sell its tickets through third parties and anyone doing so is in breach of its terms and conditions.

“If it finds out that a site is bidding on the Ryanair trademark to attract traffic and then alerts Google, Google has a responsibility in terms of there being a breach of contract rather than a trademark infringement.”

Coverage of the case has focused on luxury goods manufacturer Louis Vuitton, which objected to Google selling its trade mark to a company which was selling fake Louis Vuitton products.

However, the judgment related to three cases, one of which involved an online travel agency, BDV.

The French independent agency first complained in 2002 about rivals bidding on its trademarked ‘Bourse des Vols’, ‘Bourse des Voyages’ and ‘BDV’ terms.

Overall, Porter said that the decision “doesn’t provide a remedy” to the issue of protecting trademarks.

“Rights holders are still concerned that Google is making money from trademarks which it doesn’t own.  They wanted it stopped at source.”

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