Google France & Google (Intellectual property) [2010] EUECJ C-237/08 (23 March 2010)

Google France & Google (Intellectual property) [2010] EUECJ C-237/08 (23 March 2010)

The Court held that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark, goods or services identical with those for which that mark is registered, if the ad does not enable an average internet user to ascertain the origin of the goods or services. However, a referencing service provider (Google) which stores, as a keyword, a sign identical with a trade mark and organises the display of ads on the basis of that keyword does not itself use that sign within the meaning of EU trade mark law. The referencing service provider may benefit from the liability exemption for hosting under Article 14 of...

Citation
[2010] EUECJ C-237/08
Parties
Appellant/defendant: Google France SARL; Appellant/defendant: Google Inc.; Respondent/plaintiff: Louis Vuitton Malletier SA; Respondent/plaintiff: Viaticum SA; Respondent/plaintiff: Luteciel SARL; Respondent/plaintiff: Centre national de recherche en relations humaines (CNRRH) SARL; Respondent/defendant: Tiger SARL; Respondent/plaintiff: Mr Thonet; Respondent/defendant: Mr Raboin
Jurisdiction
European Union
Judgment Date
23 March 2010
Procedural Posture
References for Preliminary Ruling (joined Cases C 236/08, C 237/08, C 238/08) / Preliminary Reference to the Court of Justice of the European Union
Outcome
Preliminary ruling issued; questions answered as set out in the judgment.
Legal Topics
Trade Marks, Liability of Internet Service Providers, Keyword Advertising, Electronic Commerce, Intermediary Liability
Intellectual Property Law European Union Law Information Technology Law Trade Marks Liability of Internet Service Providers Keyword Advertising Electronic Commerce Intermediary Liability

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Parties

Google France SARL

Appellant/defendant

Google Inc.

Appellant/defendant

Louis Vuitton Malletier SA

Respondent/plaintiff

Viaticum SA

Respondent/plaintiff

Luteciel SARL

Respondent/plaintiff

Centre national de recherche en relations humaines (CNRRH) SARL

Respondent/plaintiff

Tiger SARL

Respondent/defendant

Mr Thonet

Respondent/plaintiff

Mr Raboin

Respondent/defendant

Procedural Posture

References for Preliminary Ruling (joined Cases C 236/08, C 237/08, C 238/08) / Preliminary Reference to the Court of Justice of the European Union

Legal Issues

  1. 1 Whether a referencing service provider (Google) uses trade marks within the meaning of Article 5(1) and (2) of Directive 89/104 and Article 9(1) of Regulation No 40/94 by allowing advertisers to select keywords identical or similar to registered trade marks and displaying ads based on those keywords.
  2. 2 Whether the proprietor of a trade mark can prohibit such use under EU trade mark law, especially for marks with a reputation.
  3. 3 Whether the referencing service provider benefits from the liability exemption for hosting under Article 14 of Directive 2000/31/EC.

Ratio Decidendi

The Court held that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark, goods or services identical with those for which that mark is registered, if the ad does not enable an average internet user to ascertain the origin of the goods or services. However, a referencing service provider (Google) which stores, as a keyword, a sign identical with a trade mark and organises the display of ads on the basis of that keyword does not itself use that sign within the meaning of EU trade mark law. The referencing service provider may benefit from the liability exemption for hosting under Article 14 of...

Court Disposition

Preliminary ruling issued; questions answered as set out in the judgment.

Orders

  • Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark, goods or services identical with those for which that...
  • A referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of ads on the basis of that keyword does not itself use that sign within the meaning of Article 5(1) of Directive 89/104 or Article 9(1)(a) and (b) of Regulation No 40/94.