Do you market your business on-line? If so, you may have considered buying Google “adwords” or similar search engine “words” to ensure your website is turned up under “sponsored links” on searches.

In a very important EU decision in July, the Court of Justice in case C-558/08 (Portakabin) looked at this issue. It had already held in the L’Oréal case that search engines themselves (such as Google) do not breach the EU trademarks directive when they allow customers to purchase competitors’ registered trademarks as search terms. This latest decision was about liability as between competitors. It held there would only be a breach of a registered trademark “where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad
originate from the proprietor of the trademark or from an undertaking economically linked to it or, on the contrary, originate from a third party”.

So, the test is whether the average user is confused as to origin. Someone searching Coca Cola who is shown on their search, as well as natural search results for the real Coca Cola, a clearly marked “Sponsored link” on the righthand side which is for Pepsico, a different company for example may not be confused. Whereas if that sponsored link is Cocacolapepsi, they may well be. This is a very common issue in practice for internet lawyers, as increasing volumes of customers and suppliers move on—line, and there will be much debate about the meaning of the court’s words above.

If you want any advice on your internet marketing, E—commerce law, distance selling regulations, use of intellectual property rights on—line and related topics contact Cathy Cook at Jordans Solicitors Wakefield Offices in West Yorkshire.


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