A European Court of Justice has found in favor of Google in a trademark keyword infringement case. Google, it was alleged, allowed counterfeiters to purchase the AdWord keywords of trademarks for companies that make the legitimate versions of the counterfeiters’ goods.
The complaint alleged that Google allowed those that sell fake Louis Vuitton bags to purchase AdWord keywords such as “Louis Vuitton replicas” and “Louis Vuitton fakes.”
The Courts holding remained sensitive to protecting Internet service providers while allowing a findng of trademark infringement against the party directly purchasing the infringing keywords;
The Court held that while counterfeiters that purchase the trademarks of others in keywords can be held liable for trademark infringement, the seller of those keywords can not. However, the Court also held that there may be legitimate reasons that a party would purchase a trademark in a keyword, such as in the case of “Louis Vuitton accessories” or “used Louis Vuitton bags.”
Internet law attorneys and other Internet users must be very careful when registering for Google AdWords. Although this court has reinforced prior findings that do not find Internet service providers (in this case Google) liable for trademark infringement, Internet users directly registering AdWords campaigns for phrases or words containing federally registered trademarks can be found liable for damages to the owner of the particular trademark being infringed upon.