'But I Still Haven’t Found What I’m Looking For' – The ECJ and the Use of Competitor’s Trademark in Search Engine Keyword Advertising

Abstract

When it comes to using competitor’s trademark in keyword advertising, legal certainty on its permissibility has hitherto been lacking within the EU. The European Court of Justice as the supreme interpreter of EU law has recently delivered its first corresponding preliminary rulings which were expected to bring about clarification. This paper critically assesses those rulings with an aim to identify the current de facto state of the law. Use of competitor’s trademark is now allowed per se. Two potentially actionable situations need to be identified. Firstly, the use amounts to actionable use when the advertisement does not enable “normally informed and reasonably attentive internet users” to distinguish whether the ad emanates from an entity economically linked with the trademark. The problem of this “Google France consumer confusion standard” is its abstractness: when should the advertiser explicitly dissociate itself in the ad from the trademark used? Secondly, use of competitor’s trademark can amount to actionable use of reputable marks without any confusion for the user: the exact conditions for such a situation remain somewhat uncertain. These findings are further underlined following the examination of the rulings from the point of view of the elusive division between “interpretation” and “application” in the preliminary reference procedure involving the ECJ and the national courts. While the longed-for legal certainty has still not been found, more concrete upcoming rulings can fix the situation.

Keywords: AdWords, Trademark, Keyword, Google, Search Engine, Advertising, Preliminary Reference, Preliminary Ruling, ECJ, Function of Indicating Origin, Advertising Function, Google France, Interflora, BergSpechte, C-236/08, Unfair Competition Law, Digital Agenda, Advocate General, Maduro, Jääskinen