InfoCommons

Keywords, Adwords, Meta Tags and Trade Marks

Posted in Uncategorized by coda on October 22, 2009

My class this week focussed on the recent keyword challenges before the Court of Justice. I posted some videos for my class – we used this to get a sense of context. I then stumbled on a video by Google. This video, according to Google, was prompted by questions about how this search engine uses “keywords” meta tag in ranking web search results. To get us thinking Google provides us with a neat analogy:

Question
Suppose you have two website owners, Alice and Bob. Alice runs a company called AliceCo and Bob runs BobCo. One day while looking at Bob’s site, Alice notices that Bob has copied some of the words that she uses in her “keywords” meta tag. Even more interesting, Bob has added the words “AliceCo” to his “keywords” meta tag. Should Alice be concerned?

Answer
At least for Google’s web search results currently (September 2009), the answer is no. Google doesn’t use the “keywords” meta tag in our web search ranking. This video explains more:

According to the Institute of Practitioners in Advertising the decision by Google to make available keywords to all users will result in competitors and rival brands can take advantage of the brand value that resides in descriptions that correspond to trade mark names. The effect of Google’s strategy is that that when consumers key in search terms of well-known trade mark names or brands, ads will be displayed alongside the search results.
For example: type in Louis Vuitton and you may get rival brands and even ads of sites cheap copies. Google’s response to the growing criticism is that they aim to facilitate the process by which customers can now make informed decisions. Search engines are one of the most common tools used by surfers to find information.
Google is one of the leaders in monetizing search functionalities. By June 2008, Google was used for more than 61.5% of all web searches. The company’s AdWords programme, is the most common form of online advertising. Sponsored listings now appear alongside the results produced by keyword searches. The advertising revenue stream is reputed to be around $21bn.

Let us return to the recent opinion of ADVOCATE GENERAL POIARES MADURO

The AG begins by acknowledging two characteristics of online marketing and consumer behaviour: the use of search engines by consumers when making decisions about goods and services and the corollary, strategies to reach out to consumers by the placement, for example, of advertisements next to the search results. The results from the search engine are, so to speak, the product of a functional act. The placement of the advertisements however is the result of a contractual relationship created between the search engine provider and the advertiser. What is so objectionable about the practice of using keywords which correspond to registered trade marks in this manner? Is the resulting commodity, an intellectual property right, that requires a tripartite licensing arrangement: Google TM Owner Advertiser?
Para 4. “More specifically, the proprietors of the trade marks (4) are trying to prevent the selection of such keywords by advertisers. They are also trying to prevent the display by search engine providers of ads in response to those keywords, as this may result in sites for rival or even counterfeit products being displayed alongside natural results for their own sites. The question, as put to the Court, is whether the use of a keyword which corresponds to a trade mark can, in itself, be regarded as a use of that trade mark which is subject to the consent of its proprietor.”

The 3 Consolidated Appeals
Case C‑236/08 (‘the first reference’)Google v Louis Vuitton Malletier SA (‘LV’)
LV is the proprietor of the Community trade mark ‘Vuitton’ and the French national trade marks ‘Louis Vuitton’ and ‘LV’.
LV discovered that the entry of the LV trade mark in Google’s search engine resulted in a number of advertisements for sites offering counterfeit versions of LV’s products. Advertisers were also given the option of purchasing descriptions associated with counterfeit – ‘imitation’, ‘replica’ and ‘copy’. Google was found liable for trade mark infringement in both courts in France. It then appealed on a point of law to the Cour de cassation. This Court was asked for a preliminary ruling on 3 points:
a. Is the act of permitting selection of keywords corresponding to registered trade marks an infringement of Community and National Trade Marks, and in permitting advertising sites to offer counterfeit products do they incur similar liability?

b. What protections do well-known marks have in this context?

c. Is Google merely an intermediary and hence not liable for facilitating or hosting content of this nature?
Directive 89/104

The Court looked at Article 5(1)(a) and (b) of [Directive 89/104] (s10(1)(2) TMA 1994) and Article 9(1)(a) and (b) of [Regulation No 40/94 – CTM] to assess whether these provisions can be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?

The Provision hosting under Article 14 of [Directive 2000/31] is now found in the Electronic Commerce (EC Directive) Regulations 2002, Reg 19:

Hosting
1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:
(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or
(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.
2. Paragraph 1 shall not apply when the recipient of the service is acting under the authority or the control of the provider.
If Google come within this regulation it cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?’

Case C‑237/08 (‘the second reference’) Google v Viaticum SA (‘Viaticum’) and Luteciel SARL (‘Luteciel’)
Viaticum and Luteciel are proprietors of the French trade marks ‘bourse des vols’, ‘bourse des voyages’ and ‘BDV’.
The facts here are different. Entering Viaticum and Luteciel’s trade marks into Google’s search engine resulted in the display of advertisements for sites offering identical or similar products. Additionally, Google offered the possibility of advertisers, who happened to be competitors of V and L, selecting for that purpose keywords which corresponded to those trade marks.
Two questions were referred to the Court for a preliminary ruling.
a. Was the act of offering the use of a selection of keywords which corresponded to those trade marks, and in advertising sites offering identical or similar products a trade mark infringement.
b. Was the hosting exemption available?

Case C‑238/08 (‘the third reference’) Google, Mr Raboin and Tiger SARL (‘Tiger’) v Mr Thonet and Centre national de recherche en relations humaines SARL (‘CNRRH’).
CNRRH is the holder of a licence for the French trade mark ‘Eurochallenges’, granted by Mr Thonet, the proprietor of that trade mark.
It was found in the earlier proceedings that entering ‘Eurochallenges’ into Google’s search engine triggered the display of ads for sites offering identical or similar products. It has also been established that Google offered advertisers the possibility of selecting such a term as a keyword for that purpose. As in the second reference, the products offered on those sites did not infringe that trade mark and have been attributed to competitors.

The first question from the Cour de cassation concerns the possibility of a trade mark infringement consisting in the act of selecting for advertising purposes a keyword which corresponds to the trade mark; the second question also concerns a possible trade mark infringement, but this time consisting in allowing that selection and in advertising sites offering identical or similar products (like the first question in the second reference); the third question concerns the possible application of the liability exemption for hosting (as did the last question in both the first and second references).

RULING
The Court begins by noting that the sixth recital in the preamble to Directive 89/104 does not preclude the application of unfair competition, civil liability or consumer protection legislation or rules.

The central question raised by the appeals:
“does the use by Google, in its AdWords advertising system, of keywords corresponding to trade marks constitute an infringement of those trade marks?”

Was there trade mark “use” and more specifically whether the use relates to goods or services?

Article 5
Rights conferred by a trade mark

1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Additionally, Article 3 states that the following, inter alia, may be prohibited under paragraphs l and 2:

(a) affixing the sign to the goods or to the packaging thereof;

(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the sign;

(d) using the sign on business papers and in advertising.

Google argued that there could be no use of the trade marks, since a keyword could not be deemed to be a “sign”. It will be noted that under section 1(1) the aim of the legislation in requiring a claimant to define its interests in the form of a “sign” serves to identify the scope of the proprietary entitlement.

The Court was not persuaded with this line of argument and observed:
“It is true that keywords do not correspond to the classic notion of signs: they are not affixed to goods, nor do undertakings conduct their business activity under them. However, none of those factors is decisive for the purposes of determining whether certain activities are to be construed as use of a trade mark.” (para 39)

What are the likely infringements? Who are the possible infringers?
In respect of the latter, all three references concern Google’s use of keywords corresponding to trade marks. The third reference however raised the issue of whether the advertisers selection of keywords in itself constituted an infringement.

In treating the issues raised in the first reference the Court draws a distinction between advertisements involving ‘counterfeit sites’, that is to say, sites offering counterfeit products (the first question). The other references, by contrast, concern ‘competitor sites’, which offer products that do not infringe any trade marks. The trade mark proprietors, supported by France, have singled out the possibility of counterfeit sites making use of AdWords – as happened according to the facts of the first reference – as a telling example of why keywords should be subject to their control. This leads me to make some important distinctions.

The central question the Court is asked to consider is the legality of the use of keywords. The Court is keen to stress this at para 46:
“All the references concern the use in AdWords of keywords which correspond to trade marks; this use, as described, consists in the selection of those words so that ads are presented as results and in the display of ads alongside the natural results provided for those words.”

This is not a ruling that is concerned with unauthorised use of registered trade marks on the advertisers’ sites, or the products sold on those sites; nor do they concern the use of trade marks in the text of the ads displayed.

The main thrust of the claimant’s argument is that all the uses (by the advertisers, the selection of the keywords and the contractual arrangements governing the use) are connected. The example put forward before the Court is that a trade mark proprietor’s right is not limited to asserting its claims against websites selling counterfeit goods but also extends to any use in AdWords relating to that site. The view here is that the harm to the proprietor in both instances are not divisble. How can it be, the argument goes, that it is an infringement to sell counterfeit goods on a website but not Adwords which induce infringement?

We have seen the “inducement” argument being used in the context of file sharing software used for infringing activities.
The Court takes the view that a liability rule of “inducement” in trade mark law is foreign to EU jurisprudence. In taking this stance the Court appears to be reluctant to penalise those who use or rely on the advertising practice of placing advertisements next to search results. One gets a sense of the Courts reluctance when it observes at para 49:

“The trade mark proprietors are urging the Court to go even further: to rule, in effect, that the mere possibility that a system – in the present cases, AdWords – may be used by a third party to infringe a trade mark means that such a system is, itself, in infringement. Indeed, the trade mark proprietors do not wish to limit their claims to cases where AdWords is actually used by sites offering counterfeit goods; they want to nip that possibility in the bud by preventing Google from being able to make keywords corresponding to their trade marks available for selection. From the existence of a risk that AdWords may be used to promote those counterfeit sites, they deduce a general right to prevent the use of their trade marks as keywords. If the infringement lies in the use of those keywords in AdWords, as the trade mark proprietors claim, that is so whether or not the sites displayed in response actually infringe the trade mark.”

What are the reasons given by the Court in holding that the use in AdWords of keywords which correspond to trade marks does not, in itself, constitute a trade mark infringement?
This is a separate question from that of whether rules on liability (ie unfair competition, tort of passing off) could be used to address potentially infringing uses.

Response to First Question
Whether the use by Google, in AdWords, of keywords which correspond to trade marks constitutes a trade mark infringement?
If the acts of Google constitute a “use”, the subsidiary question of whether the liability exemption for hosting applies to the content featured by Google in AdWords?
Q. Whether the use by advertisers, in AdWords, of keywords which correspond to trade marks constitutes a trade mark infringement?

Section 9 of the TMA 1994 states that trade mark owners have exclusive rights to the use of the registered trade mark in the course of business. Section 10 (Article 5(1)) defines the scope of the rights [para 54]:

use by Google in AdWords of keywords which correspond to trade marks
use in the course of trade
it relates to goods or services which are identical or similar to those covered by the trade marks; and
it affects or is liable to affect the essential function of the trade mark – which is to guarantee to consumers the origin of the goods or services – by reason of a likelihood of confusion on the part of the public.

The issue of “use” has two aspects para 55:

(a) when Google allows advertisers to select the keywords (this use being somewhat internal to the operation of AdWords), (22) so that ads for their sites are presented as results for searches involving those keywords; and
when Google displays such ads, alongside the natural results displayed in response to those keywords.

These uses are implicit in the question from the Cour de cassation (para 57):

The questions from the Cour de cassation directed at Google mention ‘a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites’ (emphasis added).

The Court wishes to keep both types of uses separate, mindful that the collapsing of the two uses was deemed to be necessary to establish contributory infringement.

A key question here is whether the use of the “keyword” is within the non-exhaustive list of uses that are prohibited by Article 5(3) of Directive 89/104 99 (ie use ‘in advertising). The Court notes at para 64 – 67:

To my mind, the reference in Article 5(3) of Directive 89/104 to a use ‘in advertising’ is intended to cover the more traditional occurrence of the trade mark being used in the ad itself. Such a use may indeed occur in the ads displayed through AdWords, but, as was mentioned above, the Court is not being asked about the text of such ads; it is being asked only about the keywords. The artificial categorisation of all Google’s activities in AdWords as uses ‘in advertising’ would obscure what this condition seeks to determine: to which goods or services each use relates. This, of course, may vary according to the use.

What is relevant, therefore, is the concept of ‘use made in relation to goods or services’ – it should be remembered that use ‘in advertising’ is only an illustration of this. The Court has rightly focused on this concept, by clarifying that the present condition is satisfied when a sign corresponding to a trade mark is used ‘in such a way that a link is established between the sign … and the goods marketed or the services provided’. (25)

The essential factor is therefore the link that is established between the trade mark and the good or service being sold. In the traditional example of a use in advertising, the link is established between the trade mark and the good or service sold to the general public. This happens, for example, when the advertiser sells a good under the trade mark. That is not the case with the use by Google consisting in allowing advertisers to select keywords so that their ads are presented as results. There is no good or service sold to the general public. The use is limited to a selection procedure which is internal to AdWords and concerns only Google and the advertisers. (26) The service being sold, and to which the use of the keywords corresponding to the trade marks is linked, is therefore Google’s own service, AdWords.

67. It seems evident that AdWords is not identical or similar to any of the goods or services covered by the trade marks. Accordingly, this condition is not satisfied and, in consequence, the use consisting in allowing advertisers to select in AdWords keywords which correspond to trade marks, so that ads for their sites are presented as results for searches involving those keywords, does not constitute a trade mark infringement.

We could say that the above paragraphs are determinative of the outcome to the case. Consequently, whether the use is made in relation to goods or services which are identical or similar to those covered by the trade marks, or that the use creates a link to goods or services which are identical or similar to those covered by the trade mark or that the use affects or is liable to affect the essential function of the trade mark, by reason of a likelihood of confusion on the part of the public becomes becomes a secondary matter. As the Court notes at para 68 and 69:

The fact that Google’s use of the trade marks for the purposes necessary to the functioning of AdWords is not made in relation to goods or services identical or similar to those covered by those trade marks, and therefore does not satisfy the preceding condition, makes it unnecessary to analyse in detail this condition. First and foremost, it should be borne in mind that the four conditions for finding a trade mark infringement are cumulative. (27)

Moreover, in cases where the preceding condition is not met, it is unlikely that the essential function of the trade mark – to guarantee to consumers the origin of the goods or services – will have been affected or will stand in danger of being affected. (28) Since the use by Google does not involve identical or similar goods or services, in principle there can be no risk of confusion on the part of consumers. Thus, in any event, this condition is not satisfied either.

What about the counterfeit sites and Google’s search engine/adwords functionality?
The Court is alert to the context in which the adwords operate. Google is a search engine provider, and consequently, it makes available a service that enables keywords to be used to produce search results [para 72-73]:

It is true that, by associating ads with certain keywords through AdWords, Google provides the advertisers’ sites with added exposure. However, it should be remembered that such sites, even the counterfeit ones, could feature among the natural results of the same keywords (depending on their relevance as detected by the search engine’s automatic algorithms). It should also be remembered that ads and natural results have very similar characteristics: a short message and a link. Accordingly, the difference between ads and natural results lies not so much in whether or not ads provide exposure, but more in the degree of such exposure. I have doubts as to whether, for the purposes of trade mark protection, that difference in degree will be sufficient to distinguish between the display of ads, on the one hand, and of natural results, on the other, both being provided in response to the same keywords.

In particular, I find it difficult to argue for such a distinction on the basis of the Court’s conditions for finding a trade mark infringement, which do not depend on the type of activity so long as the use takes place in the course of trade. Nevertheless, I would like to make clear that this difficulty is not enough, per se, to exclude the possibility of a trade mark infringement in the present cases. My reason for calling the attention of the Court to this issue is to highlight all the possible consequences of the present cases. If the Court holds that the display by Google of sites in response to certain keywords constitutes a trade mark infringement, it may be difficult to distinguish between the situation involving AdWords and the situation involving Google’s search engine.

The Court seems in tune with marketing practices and consumer search habits and concludes that Google’s search engine is no more than a tool (ie a conduit). The display of adwords or the display of natural results in response to keywords which correspond to trade marks is not thought to lead to a risk of confusion as to the origin of goods and services.

At para 96 the Court confirms that trade marks serve to protect other values – investment that the trade mark proprietor has made in the good or service associated with it and, in so doing, creates economic incentives for further innovation and investment [para 98]:
At the top of the scale is the special protection granted under Article 5(2) of Directive 89/104 to trade marks which have a reputation. The ‘marketing effort expended by the proprietor of [the] trade mark in order to create and maintain the image of that mark’ enables it to prevent a wide range of associations, from the negative associations that may harm the trade mark’s repute or distinctive character, to the positive associations that take advantage of the proprietor’s investment. (41) at para 107, the Court adds that:
Google’s uses of keywords which correspond to trade marks are independent of the use of the trade mark in the ads displayed and on the sites advertised in AdWords; they are limited to conveying that information to the consumer. Google does so in a manner which can be said to intrude even less on the interests of the trade mark proprietors than purely descriptive uses or comparative advertising.

The policy justification seems to be that [para 108, 109 and 110]:
I am concerned that, if trade mark proprietors were to be allowed to prevent those uses on the basis of trade mark protection, they would establish an absolute right of control over the use of their trade marks as keywords. Such an absolute right of control would cover, de facto, whatever could be shown and said in cyberspace with respect to the good or service associated with the trade mark.

It is true that, in the present cases, the trade mark proprietors limit their claims to Google’s uses in AdWords. Nevertheless, once the notion of ‘confusion’ between ads and natural results is dispelled, this becomes a matter of perspective. Trade mark proprietors may also try to prevent the display of natural results alongside ads. The right of control that they claim covers all the results of keywords corresponding to their trade marks.

That absolute right of control would not take into account the particular nature of the internet and the role of keywords in it. The internet operates without any central control, and that is perhaps the key to its growth and success: it depends on what is freely inputted into it by its different users. (57) Keywords are one of the instruments – if not the main instrument – by means of which this information is organised and made accessible to internet users. Keywords are therefore, in themselves, content‑neutral: they enable internet users to reach sites associated with such words. Many of these sites will be perfectly legitimate and lawful even if they are not the sites of the trade mark proprietor.

How are trade mark owners going to enforce their rights in cyberspace [para 115]:
Trade mark proprietors have no legal problem in tackling counterfeit sites, as such sites are clearly involved in trade mark infringements; however, the practical difficulties of doing so should not be ignored. It is often difficult to determine the ownership of the sites, the applicable legislation and jurisdictional forum, and to pursue the respective procedures. Moreover, it is apparent that trade mark proprietors believe that other sites can swiftly replace those that are found to be in infringement. Accordingly, they have concentrated their attention on AdWords. To adapt a well‑known metaphor, they believe that the most effective way to stop the message is to stop the messenger.
The Court is also alert to public policy considerations [para 123]:

That does not mean that the concerns of the trade mark proprietors cannot be addressed, only that they should be addressed outside the scope of trade mark protection. Liability rules are more appropriate, since they do not fundamentally change the decentralised nature of the internet by giving trade mark proprietors general – and virtually absolute – control over the use in cyberspace of keywords which correspond to their trade marks. Instead of being able to prevent, through trade mark protection, any possible use – including, as has been observed, many lawful and even desirable uses – trade mark proprietors would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trade marks. They would need to meet the conditions for liability which, in this area, fall to be determined under national law.

What about contributory infringement? [para 124 and 125:
It is in the context of possible liability that particular aspects of Google’s role – such as the procedure under which it allows advertisers to select keywords under AdWords – could be taken into account. For example, Google provides advertisers with optional information which can help them to maximise the exposure of their ads. As some of the parties have pointed out, it may be that information on keywords which correspond to trade marks will also yield (as related keywords) information on expressions denoting counterfeit. (64) On the basis of that information, advertisers may decide to select those expressions as keywords in order to attract internet users. It is possible that, in so acting, Google may be contributing to internet users being directed to counterfeit sites.

In such a situation, Google may incur liability for contributing to a trade mark infringement. Even though an automated process is involved, there is nothing to prevent Google from making limited exclusions from the information which it provides to advertisers regarding associations with expressions clearly denoting counterfeit. The conditions under which Google might be liable are, however, a matter to be decided under national law. They are not covered by Directive 89/104 or Regulation No 40/94 and, accordingly, fall outside the scope of the present cases.

At para 137:
137. The crucial issue is, therefore, whether Google’s activities can be classified as hosting under Article 14 of Directive 2000/31, that is to say, whether AdWords is a service consisting in the storage, at the request of the recipient of the service, of information provided by that recipient.

138. As has been noted, AdWords features certain content – namely the text of ads and their links – which is both provided by the recipients of the service (the advertisers) and stored at their request. It follows that the conditions for falling under the notion of hosting, as defined in Article 14 of Directive 2000/31, are nominally fulfilled.

139. None the less, the trade mark proprietors argue that hosting implies an operation which is purely technical. By incorporating hosting into an advertising activity, AdWords falls outside the purview of Article 14 of Directive 2000/31.

140. It is reasonable to ask why the activity of advertising would have this effect. The fact remains that certain content is hosted by information society services, be it for advertising or for any other activity covered by those services. Information society services will rarely consist in activities which are exclusively technical, and will normally be associated with other activities which provide their financial support.

141. However, the present cases involve a particular advertising context which sets the hosting activity apart. That is the reason why I find myself in agreement with the trade mark proprietors – even if not automatically endorsing their arguments – that the liability exemption under Article 14 of Directive 2000/31 should not apply to AdWords. That position is based on the underlying aim of Article 14 and of Directive 2000/31 as a whole.

142. To my mind, the aim of Directive 2000/31 is to create a free and open public domain on the internet. It seeks to do so by limiting the liability of those which transmit or store information, under its Articles 12 to 14, to instances where they were aware of an illegality. (71)

143. Key to that aim is Article 15 of Directive 2000/31, which prevents Member States from imposing on information society service providers an obligation to monitor the information carried or hosted, or actively to verify its legality. I construe Article 15 of that directive not merely as imposing a negative obligation on Member States, but as the very expression of the principle that service providers which seek to benefit from a liability exemption should remain neutral as regards the information they carry or host.

144. This point is best illustrated by comparison with Google’s search engine, which is neutral as regards the information it carries. (72) Its natural results are a product of automatic algorithms that apply objective criteria in order to generate sites likely to be of interest to the internet user. The presentation of those sites and the order in which they are ranked depends on their relevance to the keywords entered, and not on Google’s interest in or relationship with any particular site. Admittedly, Google has an interest – even a pecuniary interest – in displaying the more relevant sites to the internet user; however, it does not have an interest in bringing any specific site to the internet user’s attention.

145. That is not the position as regards the content featured in AdWords. Google’s display of ads stems from its relationship with the advertisers. As a consequence, AdWords is no longer a neutral information vehicle: Google has a direct interest in internet users clicking on the ads’ links (as opposed to the natural results presented by the search engine).

146. Accordingly, the liability exemption for hosts provided for in Article 14 of Directive 2000/31 should not apply to the content featured in AdWords. The question whether such liability exists in the first place is, as was pointed out above, a matter for national law to determine.

C – The first question in the third reference: whether trade mark proprietors can prevent the use, in AdWords, of keywords corresponding to their trade marks

147. I concluded above that neither of the uses made by Google of keywords corresponding to trade marks is in infringement of those trade marks, and that such an infringement should not depend on subsequent uses by third parties. The only issue left to assess is whether the use of those keywords by advertisers, when they select them in AdWords, constitutes an infringement.

148. This question boils down to whether there is a use in the course of trade. As was pointed out above, this condition implies that the use is not private, but part of a ‘commercial activity with a view to a gain’. (73)

149. As was also mentioned above, when Google allows advertisers to select keywords which correspond to trade marks, it does so in relation to its AdWords service. It is selling this service to advertisers; accordingly, the advertisers are doing nothing more than acting as consumers.

150. It can be said that advertisers purchase the AdWords service with a view to using it in the context of their commercial activities, and that those activities cover the ads subsequently displayed. However, that display (and the use of the trade mark that it may or may not involve) is different from the selection of keywords, not only because it happens afterwards, but also because it alone is directed at a consumer audience, the internet users. (74) There is no such audience when the advertisers select the keywords. Accordingly, the selection of the keywords is not a commercial activity, but a private use on their part.

151. This private use by advertisers is the other side of the use by Google – considered above to be legal – which consists in allowing advertisers to select keywords which correspond to trade marks. It would be contradictory to exclude an infringement in the one case and to assert it in the other. That would be tantamount to saying that Google should be permitted to allow the selection of keywords that no one is permitted to select.

152. Again, it must be remembered that the advertisers’ selection in AdWords of keywords which correspond to trade marks can take place for many legitimate purposes (purely descriptive uses, comparative advertising, product reviews, and so on). The consequence of considering that such selection constitutes, in itself, a trade mark infringement would be to preclude all those legitimate uses. (75)

153. Nor are trade mark proprietors left totally defenceless with respect to the selection of keywords which correspond to their trade marks. They can intervene whenever the effects are truly harmful, that is to say, when the ads are displayed to internet users. Although the Court has not been asked about the use of the trade mark in the ads, it should be stated that trade mark proprietors can prevent such use if it involves a risk of confusion. Even if no such risk arises, that use can be prevented if it affects other functions of the trade mark, such as those related to the protection of innovation and investment. However, it is not the use in ads, or on the sites advertised, that is the subject of the present cases.

154. As I have perhaps emphasised almost to exhaustion in this Opinion, it is important not to allow the legitimate purpose of preventing certain trade mark infringements to lead all trade mark uses to be prohibited in the context of cyberspace.

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