Adjudicating Europe

On 22 September 2009 Advocate General Maduro released his long-awaited opinion in the “AdWords” cases.

The cases concerned keywords corresponding to trademarks used in Google’s Adwords advertising system. Indeed, some trademark owners started legal proceedings in France against Google claiming that the use, in the Adwords advertising system, of keywords corresponding to trade marks amounted to trademark infringement. Said system works as follows: entering certain trademarks into Google’s search engine triggers the display of ads for sites offering counterfeit versions of the products covered by the trademark or identical or similar products of competitors.

In his opinion Maduro basically said that Google should not be deemed liable for trademark infringement for permitting advertisers to select keywords corresponding to third parties’ trademarks in its search engine.

First, the Advocate General stressed that the selection of said keywords does not amount to a use of trademark in relation to goods or services, as the use of keywords is limited to a selection procedure which is internal to the AdWords system and concerns only Google and the advertisers, but not the public at large. Secondly, he pointed out that the mere display of relevant sites in response to keywords is not sufficient to establish a risk of confusion on the part of consumers as to the origin of goods or services.

An interesting point of Maduro’s opinion is the clear refusal to introduce into the EC legal system the concept of “contributory infringement”. In particular, Maduro dismissed the following argument brought about by trademark owners: since the uses of keywords by Google may potentially contribute to infringement by third parties, those uses should be treated as constituting infringements, despite the fact that those uses do not in themselves satisfy the conditions for finding an infringement.

On the contrary, the Advocate General stressed that the act of contributing to a trademark infringement by a third party, whether actual or potential, should not constitute an infringement in itself. This is the same rationale which applies in the off-line world, as correctly pointed out by Maduro: for example, the invention of printing has multiplied the possibilities for intellectual property infringement, however it would be absurd to argue that, because of such possibilities, newspapers and their advertising or classified sections should be prohibited. Likewise, it would be illogical to maintain that producers of photocopying machines (which would facilitate third parties to commit copyright infringement) should be liable for such infringement.

Maduro stressed that the trademark owners’ claim is groundless also under a technical perspective. As a matter of fact, Google would not be in a position to make sure that no trademark infringement occurs when providing its AdWords service: indeed such service is usually rendered in connection with countless words, so that it would be impossible to check whether each one of these words infringes, or potentially infringe, third parties’ trademark rights. The Advocate General has gone even further, by saying that – If Google were to be placed under such an unrestricted obligation – the nature of the Internet and search engines as we know it would change.

However, according to Maduro’s opinion, the above conclusion does not mean that the concerns of trademark owners cannot be addressed, but only that they should be addressed outside the scope of trademark protection, for example applying rules on civil liability. In particular, trademark owners would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trademarks and they would need to meet the conditions for liability which in this area fall to be determined under national law.

The overall stance taken by Maduro in this matter is correct and consistent with the fundamental principle governing EC trademark law. The clear refusal to introduce into the EC legal system the doctrine of “contributory infringement”, born and developed in the United States but foreign to trademark protection in Europe, is to be praised. Indeed, should the arguments brought about by trademark owners be accepted, there would occur a dangerous extension of trademark protection and activities that are intrinsically (and technically) “neutral” would be transformed in unlawful acts. In other terms, whether an activity (such as Google’s AdWords service) should be considered unlawful would depend on a subsequent activity (such as the promotion by advertisers of web-sites containing counterfeit products): which – as said before when giving the examples of printing and photocopying machines – would be illogical and absurd.

Enrico Bonadio
Lecturer in Intellectual Property and Information Technology Law
Abertay University - Dundee