Tuesday, 23 March 2010

"Keywords" and locking down on third party use of them

We all know of Louis Vuitton: the company and the brand. We all know the goods they cover. This is the function of a trade mark: to act as an indication of origin for the product bearing the brand. So when Google made the words "LOUIS VUITTON" available for third parties to purchase as Google AdWords, and when third parties starting purchasing these AdWords to guarantee that their own websites (often selling counterfeit Louis Vuitton products) popped up as "Sponsored Links" when a consumer searched for "Louis Vuitton" on Google, was this a problem? Were LVMH's trade mark rights infringed? Could LVMH do anything to stop this practice? and if so: who is liable - the third party or the search engine?

Fashionista, together with fashion brand owners no doubt, has eagerly awaited the Court of Justice's judgment on these issues to see what rights brand owners have against third party use of their marks which could otherwise damage the brand and its reputation.

Third parties can be prevented from doing so if their appearance as a Sponsored Link will make it difficult for the average internet surfer to determine whether the goods are legitimate and provided by the brand owner. So, if an internet user searching for "Louis Vuitton" sees a Sponsored Link for "Louis Vuitton bags" and is unsure whether the provider of such bags is, in fact, the brand owner, LVMH would be entitled to take steps to prevent the third party's advert from appearing - including requesting the service provider to remove or disable access to a website if the advertiser's activities are unlawful.

Google was not considered liable for making trade marks available to purchase as keywords - although this will be a question for national courts on a case by case basis and will depend on whether a service provider has played an active role over the data it stores.

Fashionista breathed a big sigh of relief at this positive news for brand owners. Whilst the test today laid down by the court is a subjective one which rests on "will the internet shopper be confused?", this decision at least acknowledges the possible damage to a brand owner if third party advertisements can pop-up in a calculated measure to piggy-back off the reputation of the brand a consumer is looking for. This decision should help to put an end to the stream of Sponsored Links for replica and imitation brand products which have until now frequently appeared when a luxury brand name was typed into a search engine.

A positive step to preserve hard earned brand reputations and another just measure to clamp down on those seeking to ride off the coattails of others.


Unknown said...

Totally agree, its good to know that brand protection has lifted its wings into the cyber realm....

what do you think about companies that are unlicensed dealers of luxury brands through the internet?

I am thinking about writing about it on my legal blog at fameappeal.com

The issue is as I see it, is when unlicensed dealers of luxury brands through the internet, whether the warranties attach with the item...

will there by any consumer protection?