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EU: No Secondary Liability if the alleged infringer does not make active use of the sign in his own commercial communications Example: Google France v Louis Vuitton

1.       The ECJ’s treatment of Article 5 EU Trademark Directive 2008/95 in the context of internet intermediaries is in particular enlightening in this respect. The Court in Google France v Louis Vuitton found that ‘use in the course of trade’ implies, at the very least, that the sign is used in the alleged infringer’s own commercial communications rather than that of a third party, see para 56.

2.       Google France concerned Google’s AdWords service, in which Google offered keywords for sale to advertisers and then displayed advertising links to those who searched for those selected keywords. The case arose from the fact that counterfeit sellers were purchasing the keyword ‘Louis Vuitton’, amongst other registered marks, in order for their websites show up when the public searched for those terms. While the advertisers who actually selected and paid for the signs were found to be using them in the course of trade, Google was found not to be using the marks within the meaning of Article 5 by offering them for sale as keywords or displaying ads on that basis. This is because Google was merely creating the “technical conditions” necessary for others to use the sign, which “does not mean that the party offering the service itself uses the sign” (para 56). The Court stated that:

“the use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs.”

3.       The court distinguished Google’s position from that of the advertisers using the AdWords service, see para 51. The advertisers were seen to infringe the marks when they purchased keywords in order to display advertising links leading to their goods or services.

4.       The Court therefore distinguished between situations in which a party facilitates another’s use of the sign, and situations where the party themselves uses the sign for their own commercial purposes. There is a requirement that the alleged infringer have some sort of direct dealing with the marks in their own commercial communications, a condition which was not fulfilled by Google’s use.

5.       Applying this to the situation of a freight forwarder who is transporting counterfeit goods of which he is not aware of, in sealed containers, the freight forwarders’ position is analogous to that of Google than that of the advertisers. In arranging for the forwarding of a shipment of sealed goods bearing the marks of the trademark owner, there is no active use of the signs by the freight forwarder. At most, the freight forwarder is acting to create the conditions necessary for the real infringers, the Shippers and/or Third Party, to eventually bring the counterfeit goods to market. Given that freight forwarders never directly deal with the signs or even know of their existence, their activities are even more minimal than that of Google. There is not any relevant ‘use’ of the sign by the freight forwarders.