Take action - Trade marks can be infringed by a competitor's internet keyword use (but Google claims a victory anyway).

The European Court of Justice (the ECJ) has this month provided guidance on some of the trade mark issues that can arise as a result of internet keyword advertisement services.

So what? It's time to react!

1. Internet keyword service providers (and providers of analogous services such as online auction sites and online advertising bulletin boards) should speak to their legal advisors and review whether their role is sufficiently neutral to provide them with the protection offered by article 14 of the E-Commerce Directive. They should also review their current policies relating to dealing with infringement notifications. In particular they should consider their risks of secondary liability on a country by country basis.
2. Those purchasing their competitors' trade marks as key words should consider either stopping this practice or carefully reviewing, with their legal advisors, the content of each of their triggered advertisements so as to minimise the risk of trade mark infringement.
3. Trade mark proprietors should seek to identify the keyword use of their trade marks (and use of their trade mark via similar online services) by their competitors, in the light of this legal development. If their trade marks are being used without their consent in this way then they should, in particular, consider whether:
   1. a trade mark infringement action against the advertiser(s) may now be worthwhile
   2. a notification should be sent to the service provider of the allegedly infringing use(s)
   3. whether once the service provider has been notified and it has failed to act, it should be joined to any action taken against the advertiser(s). In this respect it may be worth considering whether there is a possibility of forum shopping so as to take action in the Member State with the most favourable accessory liability laws.
4. Those alleging and those subject to allegations of trade mark infringement on an identical marks and identical goods/services basis, in any context (not just online use) should bear in mind that the ECJ appears to have considerably strengthened the protection offered to trade mark proprietors by article 5(1)(a).

Wragge & Co's IP experts have prepared a full analysis on the case.