Google’s win in US and Europe won’t affect Australian IP laws: Griffith Hack lawyer

Judge Gerald Bruce Lee’s recent US ruling in favour of Google Adwords has further strengthened the internet search engine’s business model. Google’s right to sell trademarks as search terms to parties other than the owners of the trademark was challenged by software company Rossetta Stone, but Lee’s decision means Google will allow advertisers to select trademarks as keywords not only in the US but also elsewhere in the world.

Griffith Hack senior associate Jürgen Bebber said this is the second time the internet giant has been challenged on the same issue; the first challenge by French brand Louis Vuitton also resulted in a win for Google. “The European Court of Justice found that Google was not infringing the trademark,” said Bebber.

Trademark law varies subtly from jurisdiction to jurisdiction, said Bebber: In the US there are five requirements to prove trademark infringement, whereas in Europe and Australia, the fifth requirement, proving intent to confuse the public, is not needed. “Both Google and Rosetta Stone agreed that there was no dispute over the other four requirements, whereas in the EU court, there was a dispute,” explained Bebber.

As no such case has occurred in Australia, Bebber said, it is difficult to know what a court would decide, but added it is likely it would follow the ruling of the European case. In Australia it is a possible for trademark owners to complain to Google when a competitor is attaching their brand and sponsored links to a registered trademark search term. “We regularly contact Google with this scenario on behalf of our clients,” said Bebber.

Going straight to Google and requesting it not sell trademark as keywords to competitors will no longer be available in European countries and territories from September 14. Google announced the changes last week, and said it will present web users with a range of search results less restricted to certain companies. Trademark owners, such as Louis Vuitton, will instead have to pursue the companies that buy their trademarks as search terms.

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