Google France SARL and Google Inc. v Louis Vuitton Malletier SA (C-236/08), also known as Google v. Louis Vuitton was a landmark decision in which the European Court of Justice (ECJ) held that search engines operators such as Google do not themselves infringe trademark rights if they allow advertisers to use a competitor's trademark as a keyword.
Facts
Vuitton has the Community trademark 'Vuitton' as well as the French trademarks 'Louis Vuitton' and 'LV'. These are widely accepted for having a well-renowned reputation.
In 2003, Vuitton detected that if internet users entered his trademark terms into Google's search engine, they would be directed to websites selling imitations of Vuitton's products, under the heading of 'sponsored links'.
Additionally, Google enabled the advertisers to use simultaneously with Vuitton's trademarks, expressions suggesting counterfeit products, such as 'imitation' and 'copy'. Thus, Vuitton brought a proceeding against Google, attempting to ascertain that it had infringed Vuitton's trademarks.
In 2005, the Regional Court of Paris rendered a decision determining that Google was guilty due to the infringement of Vuitton's trademarks. Subsequently, on appeal, the Court of appeal in Paris, confirmed the same outcome.
However, Google brought an appeal on a point of law to the Cassation court against the last judgement. Consequently, the French Court of Cassation stayed the proceedings and asked the CJEU for further clarification on certain aspects essential to decide the case. Thus, it referred the following questions for a preliminary ruling:
Judgement
The Court found that signs corresponding to trademarks were used in an internet referencing service through the usage of keywords, without consent of the trademark proprietors. Such keywords were chosen and accepted by clients of the referencing service provider. The Court found that Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Regulation No 40/94 allow proprietors of trade marks to prohibit any third parties from using signs identical or similar to their trademarks for goods or services. This triggers viewing of advertising links which display goods identical to those registered under protected trade marks. The Court interprets that this triggering falls under the scope of the overall scheme of Directive 89/104 and as such affects the functions of the trademark. As such, it held that by application of Article 5(1)(a) of Directive 89/104 and Article (9)(1)(a) of Regulation No 40/95, the proprietor of a trademark can prohibit a third party from using signs identical to the trade mark in use in the course of trade of similar goods, namely through the use of keywords in a referencing service provider.
The use of keywords is considered to affect the course of trade. In the words of the Court:
The Court concludes on a first instance that a referencing system is not necessarily involved in use in the course of trade according to the wording of Directive 89/104. However, its relation to the trademarked products can be established through a "relation to goods or services", as Vuitton's trade marks appeared in advertisements under a heading of" sponsored links". Although Google stated that in the absence of the mention of a sign in the actual ad no trademark rights were being violated, the Court held that the list in the Directive should be incorporated as to include modern electronic commerce and that, in that context, referencing service providers allow advertisers to choose identical signs as keywords in order to invite internet users to enter words as search terms to then click the links displayed and also the advertising links. If these sponsored links are provided above the regular list of results, internet users are more likely to click them, as they are listed first, as alternatives to the original Vuitton bags. [68] As such, it follows that the use by an advertiser of a sign identical with a trademark as a keyword falls within the concept of use "in relation to goods or services".