Google AdWords – the UK adds to pressure on ECJ to provide guidance
The High Court has referred a question about Google AdWords and registered trade marks to the European Court of Justice (ECJ), adding to the six pending referrals from other European courts on the same subject.
In May 2008, Google changed its policy in the UK and Ireland to allow third parties to bid for keywords registered as trade marks. Marks and Spencer, which operates a flower delivery service that competes with Interflora, purchased “Interflora” and other close variants as keywords, and its sponsored link therefore appeared in Google search results. Interflora sought to prevent Marks and Spencer from bidding on “Interflora” keyword search terms and commenced trade mark infringement proceedings against Marks and Spencer in December 2008.
In our Law-Now article in January, we reported that Interflora had commenced proceedings, and we questioned how the English courts would deal with such a claim prior to the ECJ handing down its decision on the references already made by the French, Dutch and German courts.
In response, Marks and Spencer claimed that its use of the “Interflora” trade mark in the Google Adwords was not “use in the course of trade” for the purposes of trade mark infringement. However, it said that the law was unclear on this point and that the court should not make any decision until clarification was received from the ECJ.
Interflora agreed that the court should wait for the ECJ to respond to the questions raised in respect of this issue, but asked the court to grant an injunction in the meantime to prevent Marks and Spencer from registering keywords featuring the “Interflora” trade mark. The judge, Mr Justice Arnold, refused to grant the injunction because Interflora had delayed in issuing proceedings for up to seven months and had not asked for an interim injunction when it commenced proceedings.
Rather than waiting for the ECJ to answer the questions from the courts of other European countries, the judge instead decided that he should refer a further question to the ECJ on the issue of whether the registration of trade marks as search engine keywords can constitute trade mark infringement. The precise question to be asked would be decided after the judge received further submissions from the parties.
The French courts referred their questions in May 2008, the Dutch courts referred their own questions in December 2008 and the German courts in January 2009. This most recent referral from the English court will compound the urgency of a response from the ECJ as soon as possible on this issue. The ECJ is due to answer the French questions in early June, although those questions relate to the liability of the search engine (e.g. Google) rather than the advertiser (in this case Marks and Spencer).
The full decision of Mr Justice Arnold may be seen here. The decision provides an excellent summary of the issues, including a review of the referrals to the ECJ made by other courts, and also provides a full explanation and screenshots of the Google Adwords registration process.
For the full article discussing the German, Dutch and French referrals on this issue please click here.
