Wednesday, 24 March 2010

The much awaited ECJ Adwords decision

Afro Leo has come across the much awaited ECJ Adwords decision - handed down within the last 24 hours here. Readers may recall an earlier post on this blog entitled ECJ closer to Adwords decision covering a preliminary opinion which basically said that the sale and use of keywords (which could include a competitor's registered trade mark) did not amount to trade mark infringement in Europe (the same TM laws that most of Africa follow). Yesterday brand owners (Google included) clawed back some significant ground. Users can infringe by using identical keywords where there is deception. However, Google's lucrative Adword's business model is preserved whilst its obligation to respond expeditiously to take down notices is clarified. Nice. Don't just take it from me though:

"Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark 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 which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.

Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned."


Watch the IPKAT for in depth commentary.

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