SINCE 2010, the Court of Justice of the European Union (“CJEU”) and the national courts of various European Union countries, including the United Kingdom, have been quite busy handling trials and rendering judgments on the issue of trade mark infringement by Google and/or advertisers who used signs that are identical or similar to the trade marks of registered proprietors as keywords in internet advertising. It is important that we watch the jurisprudence coming out of these courts, particularly those of the United Kingdom, because the statutory provisions which form the basis for the claims made in those cases are substantially similar to the provisions of the Trade Marks Act, Jamaica. Jamaica is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), as is the European Union, and the jurisprudence from the cases is based on the fundamental principles of TRIPS.

Google, the world’s most popular search engine, featured in all the cases decided since 2010. Google’s Adwords service allows advertisers to select words, signs and symbols that will trigger a display of an advertisement for the advertiser’s products or services and a hyperlink to the advertiser’s website. Advertisers are allowed, if they so choose, to select signs or symbols that are identical or similar to, among other things, registered trade marks, including the trade marks of the advertiser’s direct competitor. When Internet users type in a search term in Google’s search box, sponsored links or paid advertisements of advertisers who bought a “keyword” used in the user’s search, which may or may not be related in any way whatsoever to the user’s search term, are displayed in the search results, usually in a separate section.

On May 21, 2013, the CJEU handed down its much anticipated judgment in Interflora Inc and another v Marks and Spencer plc and another. In this case, Marks and Spencer, one of the most popular retail stores in the UK, paid for the keyword “Interflora” and variations thereof. “Interflora” is the trade name and registered trade mark of the most popular flower delivery service in the UK, and in 2008 when the cause of action arose, was the most searched term in the flower sector (even more popular than the search term “flower”). Interflora sued Marks and Spencer and claimed that the defendant had infringed its trade mark by purchasing it in Google’s Adwords service. The relevant courts found that Marks and Spencer used the trade mark “Interflora” in the course of trade. Further, the manner of Marks & Spencer’s advertisement led well-informed and reasonably observant internet users to believe, wrongly, that Marks & Spencer was a part of the Interflora network of flower delivery service providers.

The CJEU pointed out that “keyword advertising is not inherently or inevitably objectionable from a trade mark perspective. On the contrary, the case law of the CJEU in this field recognises that, as a general rule, keyword advertising promotes competition…”.

The court indicated some strategies that advertisers may use in order to avoid trade mark infringement while taking advantage of a keyword advertising service. Some of these strategies include:

* Appropriate design of the advertisement with the aim of preventing confusion among well-informed and reasonably observant internet users, for example, by using disclaimers;

* Ensuring that advertisements clearly state the origin of the products and services in question so that well-informed and reasonably observant internet users will be able to ascertain without difficulty whether or not the advertiser is a competitor of the trade mark proprietor or an economically linked entity to the proprietor; and

* Contracting with a search engine that displays the advertisement in a clearly separated part of the search engine results page.

Additionally, advertisers should ensure that their advertisements do not include keywords that are identical or similar to the registered trade marks of competitors or proprietors who may claim that the advertiser is taking unfair advantage of, or making detrimental use of its trade mark.

In an earlier case of Google France SARL v Louis Vuitton, the CJEU held that Google did not infringe the “Louis Vuitton” trade mark because the search engine did not itself use the trade mark to identify or indicate the origin of its own services. However, given that it is the party responsible for creating the technical conditions necessary for the AdWords System to operate, Google will be responsible for acting quickly to stop any infringing use of a trade mark and will be liable if it fails to do so.

As Internet advertising becomes more of the norm in Jamaica and as local search engines become more established, the following lessons to be learned from the Google AdWords experience in Europe should be noted:

1. Search engines have a responsibility to ensure that infringing use of trade marks are quickly removed from their websites. This means, therefore, that operators of search engines should ensure that they have staff members that are trained to identify and responsibly handle trade marks infringement issues. Google has in place a formal complaints procedure that allows trade mark owners to lodge complaints.

2. Advertisers may still bid for keywords for advertising on the Internet (and search engines may still offer products similar to Google’s AdWords System), but caution needs to be taken to ensure that there is no trade mark infringement by the advertisers. To this end, Google has been advising its AdWords customers to seek legal advice.

Andrea Scarlett-Lozer is a Partner at Myers, Fletcher & Gordon and is a member of the firm’s Commercial and Intellectual Property Department. Andrea may be contacted via andrea.scarlett@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.