Google Search Keywords and EU Trademark Infringement

When companies buy keywords that include competitors' trademarks on Google Search, questions arise about whether this practice crosses legal boundaries. In the European Union (EU), trademark law aims to protect brand identity and prevent consumer confusion. But does using a trademark as a Google Search keyword amount to trademark infringement? Here, we explore the legal framework, relevant court decisions, and practical implications for businesses operating in the EU.

Understanding Trademark Use in Online Advertising

Trademarks protect distinctive signs that identify goods or services from a particular company. Traditionally, trademark infringement occurs when a third party uses a protected mark (i.e. brand name or logo) in a way that causes confusion or damages the trademark owner's reputation.

In online advertising, companies often purchase keywords on platforms like Google Ads to trigger their ads when users search for specific terms. Sometimes, these keywords include competitors’ trademarks. The question is whether this keyword use counts as "use in the course of trade" under EU trademark law, which is a prerequisite for infringement.

Legal Framework in the EU

The EU Trademark Directive (Directive 2015/2436) and the EU Trademark Regulation (Regulation (EU) 2017/1001) set out the rules governing trademarks. According to these laws, infringement occurs if:

• A mark identical or similar to a registered trademark is used in the course of trade.

• The use is without the trademark owner's consent.

• The use causes a likelihood of confusion among the public, including the risk of association with the trademark.

  
  

The key issue is whether buying a trademark as a keyword constitutes "use in the course of trade" and whether it leads to confusion.

Key EU Court Decisions

The Court of Justice of the EU (CJEU) has addressed this issue in several landmark cases:

Google France SARL and Google Inc. v Louis Vuitton Malletier SA (2010)

In this case, Google allowed advertisers to buy keywords corresponding to Louis Vuitton’s trademarks. The CJEU ruled that Google’s role as an intermediary does not amount to trademark infringement by itself. However, advertisers who use trademarks in a misleading way in their ad text could infringe the trademarks.

Interflora Inc v Marks and Spencer plc (2014)

Interflora sued Marks and Spencer for buying "Interflora" as a keyword. The CJEU held that using a competitor’s trademark as a keyword can be infringement if it causes confusion or takes unfair advantage of the trademark’s reputation. The court emphasized the importance of the ad’s presentation and whether it clearly identifies the advertiser.

Portakabin Ltd v Primakabin BV (2018)

This case clarified that using a competitor’s trademark as a keyword is not automatically infringement. The decisive factor is whether the ad misleads consumers about the origin of the goods or services.

When Does Keyword Use Lead to Infringement?

Based on these rulings, keyword use may lead to infringement if:

• The ad text itself does not clearly identify the advertiser, causing consumers to believe the ad is linked to the trademark owner.

• The use takes unfair advantage of the trademark’s reputation or distinctive character.

• The use damages the trademark owner’s interests.

  
  

Conversely, if the ad clearly identifies the advertiser and does not mislead consumers, buying a competitor’s trademark as a keyword may be lawful.

Conclusion

To avoid the risk of trademark infringement when using competitors’ trademarks as keywords, companies should:

• Ensure the ad text clearly identifies the advertiser and avoids misleading claims.

• Avoid using the trademark in the ad copy unless authorized.

• Monitor keyword campaigns regularly to prevent unauthorized use.

• Seek legal advice when planning keyword strategies involving competitors’ trademarks.

  
  

Disclaimer: Content is not intended to, and does not constitute, legal advice, and no attorney-client relationship is formed.